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]
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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)
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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,
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18:35 Jan 29, 2010
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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
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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
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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
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18:35 Jan 29, 2010
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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
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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.
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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:
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18:35 Jan 29, 2010
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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].
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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
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]]>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]
-----------------------------------------------------------------------
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
