USPTO Announces Final Rule on Standardization of Patent Term Adjustment Statement for Information Disclosure Statements

On June 15, 2023, the U.S. Patent and Trademark Office (USPTO) issued a final rule on the filing of a Patent Term Adjustment (PTA) statement regarding an Information Disclosure Statement (IDS). In particular, the USPTO is now requiring the use of its Form PTO/SB/133 along with an appropriate document code, with the goal of streamlining the process by more accurately capturing and accounting for the PTA statement “without unnecessary back-and-forth between the Office and applicant.”  According to the USPTO, failure to submit a PTA statement regarding IDSs using the new form or the appropriate document code will require an applicant to request reconsideration of the PTA for the IDS to not be considered a failure to engage in reasonable efforts to conclude the prosecution of the application. There is no USPTO fee for filing the PTA statement using the required form PTO/SB/133. 

By way of background, under the PTA provisions of the American Inventors Protection Act of 1999 (AIPA), an applicant is entitled to PTA for various reasons, such as a delay by the USPTO in taking certain actions during examination and failing to issue a patent within three years of the actual filing date. However, the AIPA sets forth a number of conditions and limitations on any PTA, and provides that the period of adjustment can be reduced by a period equal to the period of time during which the applicant “fails to engage in reasonable efforts to conclude prosecution of the application.”

Nevertheless, a “safe harbor” exists when filing a document containing only an IDS, including when filing a Request for Continued Examination (RCE) with the IDS, which will not be considered a failure to engage in reasonable efforts to conclude the prosecution if it is accompanied by the required PTA statement.  Specifically, the “safe harbor” requires a statement that each item of information contained in the IDS:  (1) was first cited in any communication from a patent office in a counterpart foreign or international application or from the USPTO, and this communication was not received by any individual designated in 37 C.F.R. § 1.56(c) more than 30 days prior to the filing of the IDS; or (2) is a communication that was issued by a patent office in a counterpart foreign or international application or by the USPTO, and this communication was not received by any individual designated in 37 C.F.R. § 1.56(c) more than 30 days prior to the filing of the IDS.

Thus, the final rule specifically revises 37 C.F.R. § 1.704(d) to include a new paragraph (d)(3) requiring applicants to submit the statement required for the “safe harbor” on USPTO form PTO/SB/133 using the appropriate document code “PTA.IDS”.  When filed in this manner, the USPTO computer program that computes PTA will be able to automatically determine when the required “safe harbor” statement was filed.

The final rule will take effect on July 17, 2023 and will apply to any PTA statement under 37 C.F.R. § 1.704(d) filed on or after this date. 

A link to the USPTO’s final rule is here.