Patent Term Adjustment, IDSs and the 30-Day Rule

The rules for determining Patent Term Adjustment (PTA) are very complicated. Rule 704 determines when PTA may be reduced due to “Applicant Delay.” This report focuses on when the filing of an Information Disclosure Statement may constitute Applicant Delay and reduce the PTA.

Paragraphs 37 CFR 1.704(c)(6), 37 CFR 1.704(c)(8), 37 CFR 1.704(c)(9), and 37 CFR 1.704(c)(10) in 37 CFR are the most important sections relating to Applicant Delay.

704(c)(6) Period before first action is issued

If an IDS is filed less than one month before the mailing of an Office action or a notice of allowance, Applicant Delay will be incurred if the IDS requires the mailing of a supplemental Office action or notice of allowance. This rule applies even if the IDS is filed before the first action on the merits, such as a rejection or an allowance.

The delay will be the number of days beginning on the day after the date that is eight months from either the date on which the application was filed or the date of commencement of the national stage and ending on the date the IDS was filed. Since it is impossible to determine when the first action will issue, if possible, an SB133 should be filed together with the IDS if the IDS is filed more than eight months after the application is filed.

704(c)(8) Period after filing a reply

If an IDS is filed after a reply is filed, such as a response to an Office Action, Applicant Delay will be incurred equal to the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the IDS was filed.

704(c)(9) Period after a PTAB decision

Applicant Delay will be incurred if an IDS is filed after a decision by the Patent Trial and Appeal Board, other than a decision designated as containing a new ground of rejection, and less than one month before the mailing of an Office action or a notice of allowance, if the IDS requires the mailing of a supplemental Office action or supplemental notice of allowance. The delay will be begin on the day after the date of the decision and will end on the date the IDS was filed.

704(c)(10) Period after a Notice of Allowance

Applicant Delay will be incurred if an IDS is filed after a Notice of Allowance. The delay will be begin on the day after the date of mailing of the notice of allowance and will end on the date the IDS was filed. Note that Applicant Delay will be incurred even if the IDS is filed with an RCE. See 37 CFR 1.704(c)(12).

Safe Harbor - SB133 form concerning timeliness of the IDS

Applicant Delay can be avoided under the foregoing situations if the IDS is timely filed with Form SB133. Form SB133 can be filed when the information in the IDS:

(i) was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c)> more than thirty days prior to the filing of the information disclosure statement; or

(ii) is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.

Section 704(d)(1) states that any statement invoking the 30-day rule must be filed using form SB133. No changes to the form are permitted. And, the SB133 form must “accompany” the IDS. The 30-day deadline is not extendible.

Rule 705 and petition under 183

In the event that the SB133 form is not filed concurrently with the IDS, an Applicant may file a request under Rule 705(b), together with a petition under Rule 183, to waive the requirement that the form SB133 be filed concurrently with the IDS. In such cases, the USPTO has frequently been willing to grant the petition, consider the SB133 form, and reinstate the relevant portion of the patent term. However, the 30-day deadline itself cannot be waived, only the requirement to file the SB133 form with the IDS.

Changes at the USPTO

Given the recent changes at the USPTO, it is possible that, in the future, the examination times for patent applications may be longer than previously experienced. Accordingly, patent prosecutors should take all possible steps to avoid reductions to PTA triggered by prosecution delays at the USPTO. Such steps include filing the form SB133 when appropriate.