USPTO to Make Electronic Filing of Patent Term Extension (PTE) Requests Permanent

On May 5, 2022, the U.S. Patent and Trademark Office (USPTO) announced a proposed new rule to make the electronic filing of PTE applications permanent and mandatory. Until the COVID-19 pandemic, all PTE applications were required to be made in triplicate paper copies.  As a result of the pandemic, the USPTO allowed the electronic filing of PTE applications.  See Relief Available to Patentees in View of the COVID-19 Outbreak for Submission of Initial Patent Term Extension Applications Filed Pursuant to 35 U.S.C. 156, 1475 Off. Gaz. Pat. Office 234 (June 23, 2020).  According to the proposed new rule, follow-on filings in a PTE application can continue to be filed electronically.  The major change in the proposed new rule is that all PTE applications and follow-on filings must be filed electronically.

Formal changes include a requirement that the email address of the person to whom the USPTO should communicate must be included in addition to the person’s name, address, and telephone number.  Also, the proposed new rule expressly requires that all interim applications must provide the agency number of the approval of the product that forms the basis of the PTE application.  Apparently some applications have been filed without this information.

The elimination of the need to file duplicate and triplicate copies of the submissions will simplify filing PTE applications.  The current file size limitations of the USPTO’s EFS system apparently remains in place, as the proposed new rule includes instructions for splitting files.  However, the proposed new rule is silent regarding the use of the .DOCX format.  PTE submissions will be available on the USPTO’s PAIR system immediately upon filing.

Details are provided in the Federal Register to be published on May 6, 2022, available here: https://www.govinfo.gov/content/pkg/FR-2022-05-06/pdf/2022-09535.pdf