Interim Procedure for Patentees To Request a Recalculation of the Patent Term Adjustment To Comply With the Federal Circuit Decision in Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C. 154(b)(2)(A), 5043-5045 [2010-2041]

Download as PDF Federal Register / Vol. 75, No. 20 / Monday, February 1, 2010 / Notices countervailing duty proceedings at the Department. This notice of initiation is being published in accordance with section 751(c) of the Act and 19 CFR 351.218 (c). Dated: January 22, 2010. John M. Andersen, Acting Deputy Assistant Secretary for Antidumping and Countervailing Duty Operations. [FR Doc. 2010–2063 Filed 1–29–10; 8:45 am] BILLING CODE 3510–DS–S DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No.: PTO–P–2010–0006] Interim Procedure for Patentees To Request a Recalculation of the Patent Term Adjustment To Comply With the Federal Circuit Decision in Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C. 154(b)(2)(A) jlentini on DSKJ8SOYB1PROD with NOTICES AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Notice. SUMMARY: The United States Patent and Trademark Office (USPTO) is modifying the computer program it uses to calculate patent term adjustments in light of Wyeth v. Kappos, No. 2009– 1120 (Fed. Cir., Jan. 7, 2010). The USPTO expects to complete this software modification by March 2, 2010. In the meantime, the USPTO is providing patentees with the ability to request a recalculation of their patent term adjustment without a fee as an alternative to the petition and fee required by 37 CFR 1.705(d). In order to qualify, a form requesting a recalculation of the patent term adjustment must be submitted no later than 180 days after the patent has issued and the patent must be issued prior to March 2, 2010. In addition, this procedure is only available for alleged errors that are specifically identified in Wyeth. The USPTO is deciding pending petitions under 37 CFR 1.705 in accordance with the Wyeth decision. This notice also provides information concerning the Patent Application Information Retrieval (PAIR) screen that displays the patent term adjustment calculation. DATES: Effective Date: The procedure set forth in this notice is effective on February 1, 2010. Applicability Date: The procedure set forth in this notice is applicable only to patents issued prior to March 2, 2010, VerDate Nov<24>2008 18:35 Jan 29, 2010 Jkt 220001 in which a request for recalculation of patent term adjustment in view of Wyeth is filed within 180 days of the day the patent was granted. FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal Administration by telephone at (571) 272–7702, or by mail addressed to: Mail Stop CommentsPatents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450. SUPPLEMENTARY INFORMATION: Under 35 U.S.C. 154(b)(1), an applicant is entitled (subject to certain conditions and limitations) to patent term adjustment for the following reason: (1) If the USPTO fails to take certain actions during the examination and issue process within specified time frames (35 U.S.C. 154(b)(1)(A)), which are known as the ‘‘A’’ delays; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application (35 U.S.C. 154(b)(1)(B)), which are known as the ‘‘B’’ delays; and (3) for delays due to interference, secrecy order, or successful appellate review (35 U.S.C. 154(b)(1)(C)), which are known as the ‘‘C’’ delays. 35 U.S.C. 154(b)(2)(A) provides that ‘‘[t]o the extent that periods of delay attributable to grounds specified in [35 U.S.C. 154(b)(1)] overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.’’ The USPTO interpreted this provision as covering situations in which a delay by the USPTO contributes to multiple bases for adjustment (the ‘‘pre-Wyeth’’ interpretation of 35 U.S.C. 154(b)(2)(A)). See Explanation of 37 CFR 1.703(f) and of the United States Patent and Trademark Office Interpretation of 35 U.S.C. 154(b)(2)(A), 69 FR 34283 (June 21, 2004). The United States Court of Appeals for the Federal Circuit, however, recently held in Wyeth that the USPTO’s interpretation of 35 U.S.C. 154(b)(2)(A) was too strict, and that periods of delay overlap under 35 U.S.C. 154(b)(2)(A) only if the periods which measure the amount of adjustment under 35 U.S.C. 154(b)(1) occur on the same calendar day. The USPTO makes patent term adjustment determinations by a computer program that uses the information recorded in the USPTO’s Patent Application Locating and Monitoring (PALM) system, except when an applicant requests reconsideration pursuant to 37 CFR 1.705. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56365, 56370, 56380–81 (Sept. 18, 2000) (final rule). The USPTO is in the process of revising the computer program it uses to PO 00000 Frm 00011 Fmt 4703 Sfmt 4703 5043 calculate patent term adjustment to calculate overlapping delays consistent with the Federal Circuit’s interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth. The USPTO expects the revisions to the patent term adjustment computer program to be in place for use on the patents issuing on March 2, 2010. Patentees should note that the patent term adjustment provisions of 35 U.S.C. 154(b) are complex, there are numerous types of communications that are exchanged between applicants and the USPTO during the patent application process, the PALM system was not originally designed for the purpose of calculating patent term adjustment as provided in 35 U.S.C. 154(b), and one or more of the time frames specified in of 35 U.S.C. 154(b)(1)(A) and (B) are not met presently in a high percentage of the patents. In addition, revisions to the patent term adjustment computer program necessary to calculate overlapping delays consistent with the Federal Circuit’s interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth significantly increases the complexity of the patent term adjustment computer program. Thus, for patents issuing on or after March 2, 2010, a patentee who believes that the patent term adjustment calculation for his or her patent is not correct must file a request for reconsideration under 37 CFR 1.705(d) that complies with the requirements of 37 CFR 1.705(b)(1) and (b)(2) within two months of the date the patent issued. The USPTO is modifying and will continue to modify the patent term adjustment computer program as it becomes aware of situations in the patent term adjustment computer program where it is not correctly calculating the applicable patent term adjustment. Requests for Reconsideration of the Patent Term Adjustment indicated in the Patent: 37 CFR 1.705(d) provides, in part, that any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and must comply with the requirements of 37 CFR 1.705(b)(1) and (b)(2). 35 U.S.C. 154(b)(4) provides that an applicant dissatisfied with a determination made by the Director under 35 U.S.C. 154(b)(3) shall have remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent. The USPTO is providing an optional procedure under which patentees seeking a revised patent term adjustment in a patent issued prior to March 2, 2010, may request that the E:\FR\FM\01FEN1.SGM 01FEN1 jlentini on DSKJ8SOYB1PROD with NOTICES 5044 Federal Register / Vol. 75, No. 20 / Monday, February 1, 2010 / Notices USPTO recalculate the patent term adjustment without a request for reconsideration under 37 CFR 1.705(d) (or fee), provided that the patentee’s sole basis for requesting reconsideration of the patent term adjustment in the patent is the USPTO’s pre-Wyeth interpretation of 35 U.S.C. 154(b)(2)(A) and such a request is filed within 180 days of the day the patent was granted. The USPTO is providing a Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) for use in making such a request. The Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) is available on the USPTO Web site at https:// www.uspto.gov/forms/index.jsp. This procedure and Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) are applicable only for patents that issue prior to March 2, 2010. The USPTO will deny as untimely any request for recalculation of patent term adjustment indicated on a patent that is not filed within 180 days of the day the patent was granted. Patentees are reminded that this is an optional procedure, and that any patentee who wishes to preserve his or her right to review in the United States District Court for the District of Columbia of the USPTO’s patent term adjustment determination must ensure that he or she also takes the steps required under 35 U.S.C. 154(b)(3) and (b)(4) and 37 CFR 1.705 in a timely manner. The fee specified in 37 CFR 1.18(e) is required for a request for reconsideration under 37 CFR 1.705 (37 CFR 1.705(b)(1)), and the USPTO may only refund fees paid by mistake or in excess of that required (35 U.S.C. 42(d)). Therefore, the procedure set forth in this notice is not a basis for requesting a refund of the fee specified in 37 CFR 1.18(e) for any request for reconsideration under 37 CFR 1.705, including any previously filed request that was solely based on the USPTO’s pre-Wyeth interpretation of 35 U.S.C. 154(b)(2)(A). The procedure set forth in this notice and the Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) may not be used to request a reconsideration of the patent term adjustment indicated in the notice of allowance in an application that has not yet issued as a patent. If the application issues as a patent prior to March 2, 2010, the optional procedure set forth in this notice and the Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) may be used to request recalculation of the patent term VerDate Nov<24>2008 18:35 Jan 29, 2010 Jkt 220001 adjustment provided on the patent. It is expected that for applications issuing as patents on or after March 2, 2010, the patent term adjustment calculation will be consistent with the Federal Circuit’s interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth. The USPTO is deciding any currently pending request for reconsideration of the patent term adjustment indicated in the patent under 37 CFR 1.705(d) that was filed within two months of the date the patent issued consistent with the Federal Circuit’s interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth. Patentees who received a decision on a request for reconsideration of the patent term adjustment indicated in the patent under 37 CFR 1.705(d) under the USPTO’s pre-Wyeth interpretation of 35 U.S.C. 154(b)(2)(A) may file a request for reconsideration of that decision if such a request for reconsideration is filed within two months of the date of the decision on a request for reconsideration (37 CFR 1.181(f)). If the patentee’s sole basis for requesting reconsideration of the decision is the USPTO’s pre-Wyeth interpretation of 35 U.S.C. 154(b)(2)(A), the request for reconsideration need only state that reconsideration is being requested in view of the Federal Circuit’s decision in Wyeth (the Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) may also be used for this purpose). Patentees seeking a revised patent term adjustment in a patent issued on or after March 2, 2010, must file a request for reconsideration under 37 CFR 1.705(d) that complies with the requirements of 37 CFR 1.705(b)(1) and (b)(2) within two months of the date the patent issued. To the extent that the procedures adopted under the authority of 35 U.S.C. 2(b)(2) and 154(b)(3) require that any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and include the information required by 37 CFR 1.705(b)(2) and the fee required by 37 CFR 1.18(e), these requirements are hereby sua sponte waived for patents that meet all of the following criteria: (1) The patent must be issued prior to March 2, 2010; (2) the patentee’s sole basis for requesting reconsideration of the patent term adjustment in the patent is the USPTO’s pre-Wyeth interpretation of 35 U.S.C. 154(b)(2)(A); and (3) the Request for Recalculation of the Patent Term Adjustment in View of Wyeth form (PTO/SB/131) is filed within 180 days of the day the patent was granted. See 37 CFR 1.183. This waiver does not apply to patents issued on or after PO 00000 Frm 00012 Fmt 4703 Sfmt 4703 March 2, 2010, to requests that the USPTO recalculate the patent term adjustment for alleged errors other than that identified in Wyeth, or to any request for reconsideration of the patent term adjustment indicated in the patent filed later than 180 days after the patent was granted. Paperwork Reduction Act: This notice involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of information involved in this notice is covered by OMB control number 0651–0020. Patent Term Adjustment Information Displayed in PAIR: The USPTO provides a patent term adjustment calculation screen that is viewable through PAIR. The patent term adjustment screen has been displaying the following information at the right hand column: (1) USPTO delay days (the number of days of ‘‘A’’ and ‘‘C’’ delay); (2) Three Year Delay days (the number of days of ‘‘B’’ delay); (3) Applicant Delay days (the number of days by which the USPTO delay days will be reduced); and (4) the Total Patent Term Adjustment. Patentees who use the PAIR patent term adjustment calculation screen should note that it does not display the periods of delay which overlap and thus is not adequate for calculating the patent term under the Federal Circuit’s interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth. The USPTO plans to revise this screen to show: (1) the number of days of ‘‘A’’ delay; (2) the number of days of ‘‘B’’ delay; (3) the number of days of ‘‘C’’ delay; (4) the number of days of ‘‘A’’ delay that overlap with a day of ‘‘B’’ delay plus the number of days of ‘‘A’’ delay that overlap with a day of ‘‘C’’ delay (the provisions of 35 U.S.C. 154(b)(1)(B)(ii) prevent a ‘‘B’’ delay period and ‘‘C’’ delay period from overlapping); (5) the number of days of non-overlapping USPTO delay; (6) the number of days of applicant delay; and (7) the total patent term adjustment. The revised PAIR patent term adjustment screen, however, will not be ready by March 2, 2010. The USPTO expects the revised PAIR patent term adjustment screen to be ready by July of 2010. Nothing in this notice shall be construed as a waiver of the requirement of 35 U.S.C. 154(b)(4) that any civil action by an applicant dissatisfied with a determination made by the Director under 35 U.S.C. 154(b)(3) be filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent. E:\FR\FM\01FEN1.SGM 01FEN1 Federal Register / Vol. 75, No. 20 / Monday, February 1, 2010 / Notices Dated: January 26, 2010. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2010–2041 Filed 1–29–10; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF COMMERCE National Oceanic and Atmospheric Administration RIN 0648–XS20 Takes of Marine Mammals Incidental to Specified Activities; Taking Marine Mammals Incidental to Conducting Airto-Surface Gunnery Missions in the Gulf of Mexico AGENCY: National Marine Fisheries Service (NMFS), National Oceanic and Atmospheric Administration (NOAA), Commerce. ACTION: Notice; issuance of an incidental harassment authorization. jlentini on DSKJ8SOYB1PROD with NOTICES SUMMARY: In accordance with the Marine Mammal Protection Act (MMPA) regulations, notification is hereby given that NMFS has issued an Incidental Harassment Authorization (IHA) to the U.S. Air Force (USAF), Eglin Air Force Base (Eglin AFB), to take marine mammals, by harassment, incidental to conducting air-to-surface (A-S) gunnery missions in the Gulf of Mexico (GOM). The USAF’s activities are considered military readiness activities. DATES: Effective January 27, 2010, through January 26, 2011. ADDRESSES: A copy of the authorization, the application containing a list of the references used in this document, and NMFS’ 2008 Environmental Assessment (EA) and Finding of No Significant Impact (FONSI) may be obtained by writing to Michael Payne, Chief, Permits, Conservation and Education Division, Office of Protected Resources, National Marine Fisheries Service, 1315 East-West Highway, Silver Spring, MD 20910–3225, telephoning the contact listed below (see FOR FURTHER INFORMATION CONTACT), or visiting the internet at: https://www.nmfs.noaa.gov/ pr/permits/incidental.htm. Documents cited in this notice may also be viewed, by appointment, during regular business hours, at the aforementioned address. FOR FURTHER INFORMATION CONTACT: Candace Nachman, Office of Protected Resources, NMFS, (301) 713–2289, ext 156. SUPPLEMENTARY INFORMATION: VerDate Nov<24>2008 18:35 Jan 29, 2010 Jkt 220001 Background Sections 101(a)(5)(A) and (D) of the MMPA (16 U.S.C. 1361 et seq.) direct the Secretary of Commerce to allow, upon request, the incidental, but not intentional, taking of small numbers of marine mammals by U.S. citizens who engage in a specified activity (other than commercial fishing) within a specified geographical region if certain findings are made and either regulations are issued or, if the taking is limited to harassment, a notice of a proposed authorization is provided to the public for review. Authorization for incidental takings shall be granted if NMFS finds that the taking will have a negligible impact on the species or stock(s), will not have an unmitigable adverse impact on the availability of the species or stock(s) for subsistence uses (where relevant), and if the permissible methods of taking and requirements pertaining to the mitigation, monitoring and reporting of such takings are set forth. NMFS has defined ‘‘negligible impact’’ in 50 CFR 216.103 as ’’...an impact resulting from the specified activity that cannot be reasonably expected to, and is not reasonably likely to, adversely affect the species or stock through effects on annual rates of recruitment or survival.’’ Section 101(a)(5)(D) of the MMPA established an expedited process by which citizens of the U.S. can apply for an authorization to incidentally take small numbers of marine mammals by harassment. Section 101(a)(5)(D) establishes a 45–day time limit for NMFS review of an application followed by a 30–day public notice and comment period on any proposed authorizations for the incidental harassment of marine mammals. Within 45 days of the close of the comment period, NMFS must either issue or deny the authorization. The National Defense Authorization Act (NDAA) (Public Law 108–136) removed the ‘‘small numbers’’ and ‘‘specified geographical region’’ provisions and amended the definition of ‘‘harassment’’ as it applies to a ‘‘military readiness activity’’ to read as follows (Section 3(18)(B) of the MMPA): (i) Any act that injures or has the significant potential to injure a marine mammal or marine mammal stock in the wild [Level A Harassment]; or (ii) Any act that disturbs or is likely to disturb a marine mammal or marine mammal stock in the wild by causing disruption of natural behavioral patterns, including, but not limited to, migration, surfacing, nursing, breeding, feeding, or sheltering, to a point where such behavioral patterns are abandoned or significantly altered [Level B Harassment]. PO 00000 Frm 00013 Fmt 4703 Sfmt 4703 5045 Summary of Request NMFS originally received an application on February 13, 2003, from Eglin AFB for the taking, by harassment, of marine mammals incidental to programmatic mission activities within the Eglin Gulf Test and Training Range (EGTTR). The EGTTR is described as the airspace over the GOM that is controlled by Eglin AFB. A notice of receipt of Eglin AFB’s application and Notice of Proposed IHA and request for 30–day public comment published on January 23, 2006 (71 FR 3474). A 1–year IHA was subsequently issued to Eglin AFB for this activity on May 3, 2006 (71 FR 27695, May 12, 2006). On January 29, 2007, NMFS received a request from Eglin AFB for a renewal of its IHA, which expired on May 2, 2007. This application addendum requested revisions to three components of the IHA requirements: protected species surveys; ramp-up procedures; and sea state restrictions. A Notice of Proposed IHA and request for 30–day public comment published on May 30, 2007 (72 FR 29974). A 1–year IHA was subsequently issued to Eglin AFB for this activity on December 11, 2008 (73 FR 78318, December 22, 2008). On February 17, 2009, NMFS received a request from Eglin AFB for a renewal of its IHA, which expired on December 10, 2009. No modifications to the activity location, the mission activities, or the mitigation and monitoring measures required under the 2008–2009 IHA were requested by Eglin AFB. Therefore, these activities are identical to what has been described previously (73 FR 78318, December 22, 2008). A-S gunnery operations may potentially impact marine mammals at or near the water surface. Marine mammals could potentially be harassed, injured, or killed by exploding and non-exploding projectiles, and falling debris (USAF, 2002). However, based on analyses provided in the USAF’s 2002 Final Programmatic EA (PEA), Eglin’s Supplemental Information Request (2003), and NMFS’ 2008 EA, as well as for reasons discussed in the Notice of Proposed IHA (74 FR 53474, October 19, 2009) and later in this document, NMFS concurs with Eglin AFB that gunnery exercises are not likely to result in any injury or mortality to marine mammals. Potential impacts resulting from A-S test operations include direct physical impacts (DPI) resulting from ordnance. Sixteen marine mammal species or stocks are authorized for taking by Level B harassment incidental to Eglin AFB’s A-S activities and include: Bryde’s whale (Balaenoptera brydei); sperm whale (Physeter macrocephalus); dwarf E:\FR\FM\01FEN1.SGM 01FEN1

Agencies

[Federal Register Volume 75, Number 20 (Monday, February 1, 2010)]
[Notices]
[Pages 5043-5045]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2010-2041]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0006]


Interim Procedure for Patentees To Request a Recalculation of the 
Patent Term Adjustment To Comply With the Federal Circuit Decision in 
Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C. 
154(b)(2)(A)

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) is 
modifying the computer program it uses to calculate patent term 
adjustments in light of Wyeth v. Kappos, No. 2009-1120 (Fed. Cir., Jan. 
7, 2010). The USPTO expects to complete this software modification by 
March 2, 2010. In the meantime, the USPTO is providing patentees with 
the ability to request a recalculation of their patent term adjustment 
without a fee as an alternative to the petition and fee required by 37 
CFR 1.705(d). In order to qualify, a form requesting a recalculation of 
the patent term adjustment must be submitted no later than 180 days 
after the patent has issued and the patent must be issued prior to 
March 2, 2010. In addition, this procedure is only available for 
alleged errors that are specifically identified in Wyeth. The USPTO is 
deciding pending petitions under 37 CFR 1.705 in accordance with the 
Wyeth decision. This notice also provides information concerning the 
Patent Application Information Retrieval (PAIR) screen that displays 
the patent term adjustment calculation.

DATES: Effective Date: The procedure set forth in this notice is 
effective on February 1, 2010.
    Applicability Date: The procedure set forth in this notice is 
applicable only to patents issued prior to March 2, 2010, in which a 
request for recalculation of patent term adjustment in view of Wyeth is 
filed within 180 days of the day the patent was granted.

FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal 
Administration by telephone at (571) 272-7702, or by mail addressed to: 
Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: Under 35 U.S.C. 154(b)(1), an applicant is 
entitled (subject to certain conditions and limitations) to patent term 
adjustment for the following reason: (1) If the USPTO fails to take 
certain actions during the examination and issue process within 
specified time frames (35 U.S.C. 154(b)(1)(A)), which are known as the 
``A'' delays; (2) if the USPTO fails to issue a patent within three 
years of the actual filing date of the application (35 U.S.C. 
154(b)(1)(B)), which are known as the ``B'' delays; and (3) for delays 
due to interference, secrecy order, or successful appellate review (35 
U.S.C. 154(b)(1)(C)), which are known as the ``C'' delays. 35 U.S.C. 
154(b)(2)(A) provides that ``[t]o the extent that periods of delay 
attributable to grounds specified in [35 U.S.C. 154(b)(1)] overlap, the 
period of any adjustment granted under this subsection shall not exceed 
the actual number of days the issuance of the patent was delayed.'' The 
USPTO interpreted this provision as covering situations in which a 
delay by the USPTO contributes to multiple bases for adjustment (the 
``pre-Wyeth'' interpretation of 35 U.S.C. 154(b)(2)(A)). See 
Explanation of 37 CFR 1.703(f) and of the United States Patent and 
Trademark Office Interpretation of 35 U.S.C. 154(b)(2)(A), 69 FR 34283 
(June 21, 2004). The United States Court of Appeals for the Federal 
Circuit, however, recently held in Wyeth that the USPTO's 
interpretation of 35 U.S.C. 154(b)(2)(A) was too strict, and that 
periods of delay overlap under 35 U.S.C. 154(b)(2)(A) only if the 
periods which measure the amount of adjustment under 35 U.S.C. 
154(b)(1) occur on the same calendar day.
    The USPTO makes patent term adjustment determinations by a computer 
program that uses the information recorded in the USPTO's Patent 
Application Locating and Monitoring (PALM) system, except when an 
applicant requests reconsideration pursuant to 37 CFR 1.705. See 
Changes to Implement Patent Term Adjustment Under Twenty-Year Patent 
Term, 65 FR 56365, 56370, 56380-81 (Sept. 18, 2000) (final rule). The 
USPTO is in the process of revising the computer program it uses to 
calculate patent term adjustment to calculate overlapping delays 
consistent with the Federal Circuit's interpretation of 35 U.S.C. 
154(b)(2)(A) in Wyeth. The USPTO expects the revisions to the patent 
term adjustment computer program to be in place for use on the patents 
issuing on March 2, 2010.
    Patentees should note that the patent term adjustment provisions of 
35 U.S.C. 154(b) are complex, there are numerous types of 
communications that are exchanged between applicants and the USPTO 
during the patent application process, the PALM system was not 
originally designed for the purpose of calculating patent term 
adjustment as provided in 35 U.S.C. 154(b), and one or more of the time 
frames specified in of 35 U.S.C. 154(b)(1)(A) and (B) are not met 
presently in a high percentage of the patents. In addition, revisions 
to the patent term adjustment computer program necessary to calculate 
overlapping delays consistent with the Federal Circuit's interpretation 
of 35 U.S.C. 154(b)(2)(A) in Wyeth significantly increases the 
complexity of the patent term adjustment computer program. Thus, for 
patents issuing on or after March 2, 2010, a patentee who believes that 
the patent term adjustment calculation for his or her patent is not 
correct must file a request for reconsideration under 37 CFR 1.705(d) 
that complies with the requirements of 37 CFR 1.705(b)(1) and (b)(2) 
within two months of the date the patent issued. The USPTO is modifying 
and will continue to modify the patent term adjustment computer program 
as it becomes aware of situations in the patent term adjustment 
computer program where it is not correctly calculating the applicable 
patent term adjustment.
    Requests for Reconsideration of the Patent Term Adjustment 
indicated in the Patent: 37 CFR 1.705(d) provides, in part, that any 
request for reconsideration of the patent term adjustment indicated in 
the patent must be filed within two months of the date the patent 
issued and must comply with the requirements of 37 CFR 1.705(b)(1) and 
(b)(2). 35 U.S.C. 154(b)(4) provides that an applicant dissatisfied 
with a determination made by the Director under 35 U.S.C. 154(b)(3) 
shall have remedy by a civil action against the Director filed in the 
United States District Court for the District of Columbia within 180 
days after the grant of the patent.
    The USPTO is providing an optional procedure under which patentees 
seeking a revised patent term adjustment in a patent issued prior to 
March 2, 2010, may request that the

[[Page 5044]]

USPTO recalculate the patent term adjustment without a request for 
reconsideration under 37 CFR 1.705(d) (or fee), provided that the 
patentee's sole basis for requesting reconsideration of the patent term 
adjustment in the patent is the USPTO's pre-Wyeth interpretation of 35 
U.S.C. 154(b)(2)(A) and such a request is filed within 180 days of the 
day the patent was granted. The USPTO is providing a Request for 
Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/
131) for use in making such a request. The Request for Recalculation of 
Patent Term Adjustment in View of Wyeth form (PTO/SB/131) is available 
on the USPTO Web site at https://www.uspto.gov/forms/index.jsp. This 
procedure and Request for Recalculation of Patent Term Adjustment in 
View of Wyeth form (PTO/SB/131) are applicable only for patents that 
issue prior to March 2, 2010. The USPTO will deny as untimely any 
request for recalculation of patent term adjustment indicated on a 
patent that is not filed within 180 days of the day the patent was 
granted. Patentees are reminded that this is an optional procedure, and 
that any patentee who wishes to preserve his or her right to review in 
the United States District Court for the District of Columbia of the 
USPTO's patent term adjustment determination must ensure that he or she 
also takes the steps required under 35 U.S.C. 154(b)(3) and (b)(4) and 
37 CFR 1.705 in a timely manner.
    The fee specified in 37 CFR 1.18(e) is required for a request for 
reconsideration under 37 CFR 1.705 (37 CFR 1.705(b)(1)), and the USPTO 
may only refund fees paid by mistake or in excess of that required (35 
U.S.C. 42(d)). Therefore, the procedure set forth in this notice is not 
a basis for requesting a refund of the fee specified in 37 CFR 1.18(e) 
for any request for reconsideration under 37 CFR 1.705, including any 
previously filed request that was solely based on the USPTO's pre-Wyeth 
interpretation of 35 U.S.C. 154(b)(2)(A).
    The procedure set forth in this notice and the Request for 
Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/
131) may not be used to request a reconsideration of the patent term 
adjustment indicated in the notice of allowance in an application that 
has not yet issued as a patent. If the application issues as a patent 
prior to March 2, 2010, the optional procedure set forth in this notice 
and the Request for Recalculation of Patent Term Adjustment in View of 
Wyeth form (PTO/SB/131) may be used to request recalculation of the 
patent term adjustment provided on the patent. It is expected that for 
applications issuing as patents on or after March 2, 2010, the patent 
term adjustment calculation will be consistent with the Federal 
Circuit's interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth.
    The USPTO is deciding any currently pending request for 
reconsideration of the patent term adjustment indicated in the patent 
under 37 CFR 1.705(d) that was filed within two months of the date the 
patent issued consistent with the Federal Circuit's interpretation of 
35 U.S.C. 154(b)(2)(A) in Wyeth. Patentees who received a decision on a 
request for reconsideration of the patent term adjustment indicated in 
the patent under 37 CFR 1.705(d) under the USPTO's pre-Wyeth 
interpretation of 35 U.S.C. 154(b)(2)(A) may file a request for 
reconsideration of that decision if such a request for reconsideration 
is filed within two months of the date of the decision on a request for 
reconsideration (37 CFR 1.181(f)). If the patentee's sole basis for 
requesting reconsideration of the decision is the USPTO's pre-Wyeth 
interpretation of 35 U.S.C. 154(b)(2)(A), the request for 
reconsideration need only state that reconsideration is being requested 
in view of the Federal Circuit's decision in Wyeth (the Request for 
Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/
131) may also be used for this purpose).
    Patentees seeking a revised patent term adjustment in a patent 
issued on or after March 2, 2010, must file a request for 
reconsideration under 37 CFR 1.705(d) that complies with the 
requirements of 37 CFR 1.705(b)(1) and (b)(2) within two months of the 
date the patent issued.
    To the extent that the procedures adopted under the authority of 35 
U.S.C. 2(b)(2) and 154(b)(3) require that any request for 
reconsideration of the patent term adjustment indicated in the patent 
must be filed within two months of the date the patent issued and 
include the information required by 37 CFR 1.705(b)(2) and the fee 
required by 37 CFR 1.18(e), these requirements are hereby sua sponte 
waived for patents that meet all of the following criteria: (1) The 
patent must be issued prior to March 2, 2010; (2) the patentee's sole 
basis for requesting reconsideration of the patent term adjustment in 
the patent is the USPTO's pre-Wyeth interpretation of 35 U.S.C. 
154(b)(2)(A); and (3) the Request for Recalculation of the Patent Term 
Adjustment in View of Wyeth form (PTO/SB/131) is filed within 180 days 
of the day the patent was granted. See 37 CFR 1.183. This waiver does 
not apply to patents issued on or after March 2, 2010, to requests that 
the USPTO recalculate the patent term adjustment for alleged errors 
other than that identified in Wyeth, or to any request for 
reconsideration of the patent term adjustment indicated in the patent 
filed later than 180 days after the patent was granted.
    Paperwork Reduction Act: This notice involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this notice is covered by OMB control number 0651-0020.
    Patent Term Adjustment Information Displayed in PAIR: The USPTO 
provides a patent term adjustment calculation screen that is viewable 
through PAIR. The patent term adjustment screen has been displaying the 
following information at the right hand column: (1) USPTO delay days 
(the number of days of ``A'' and ``C'' delay); (2) Three Year Delay 
days (the number of days of ``B'' delay); (3) Applicant Delay days (the 
number of days by which the USPTO delay days will be reduced); and (4) 
the Total Patent Term Adjustment. Patentees who use the PAIR patent 
term adjustment calculation screen should note that it does not display 
the periods of delay which overlap and thus is not adequate for 
calculating the patent term under the Federal Circuit's interpretation 
of 35 U.S.C. 154(b)(2)(A) in Wyeth. The USPTO plans to revise this 
screen to show: (1) the number of days of ``A'' delay; (2) the number 
of days of ``B'' delay; (3) the number of days of ``C'' delay; (4) the 
number of days of ``A'' delay that overlap with a day of ``B'' delay 
plus the number of days of ``A'' delay that overlap with a day of ``C'' 
delay (the provisions of 35 U.S.C. 154(b)(1)(B)(ii) prevent a ``B'' 
delay period and ``C'' delay period from overlapping); (5) the number 
of days of non-overlapping USPTO delay; (6) the number of days of 
applicant delay; and (7) the total patent term adjustment. The revised 
PAIR patent term adjustment screen, however, will not be ready by March 
2, 2010. The USPTO expects the revised PAIR patent term adjustment 
screen to be ready by July of 2010.
    Nothing in this notice shall be construed as a waiver of the 
requirement of 35 U.S.C. 154(b)(4) that any civil action by an 
applicant dissatisfied with a determination made by the Director under 
35 U.S.C. 154(b)(3) be filed in the United States District Court for 
the District of Columbia within 180 days after the grant of the patent.


[[Page 5045]]


    Dated: January 26, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-2041 Filed 1-29-10; 8:45 am]
BILLING CODE 3510-16-P
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