Revision of Patent Term Adjustment Provisions Relating to Appellate Review, 81432-81437 [2011-33150]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 76, Number 249 (Wednesday, December 28, 2011)]
[Proposed Rules]
[Pages 81432-81437]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-33150]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2011-0058]
RIN 0651-AC63


Revision of Patent Term Adjustment Provisions Relating to 
Appellate Review

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to revise the patent term adjustment provisions of the rules 
of practice in patent cases. The patent term adjustment provisions of 
the American Inventors Protection Act of 1999 (AIPA) provide for patent 
term adjustment if, inter alia, the issuance of the patent was delayed 
due to appellate review by the Board of Patent Appeals and 
Interferences (BPAI) or by a Federal court and the patent was issued 
under a decision in the review reversing an adverse determination of 
patentability. The Office is proposing to change the rules of practice 
to indicate that the period of appellate review under the patent term 
adjustment provisions of the AIPA begins when jurisdiction over the 
application passes to the BPAI rather than the date on which a notice 
of appeal to the BPAI is filed. The Office recently published the final 
rule (eff. date Jan 23, 2012) concerning practice before the BPAI in ex 
parte appeals and defined that jurisdiction of the appeal passes to the 
BPAI at the earlier of the filing of the reply brief or upon the 
expiration of the time in which to file a reply brief. See Rules Of 
Practice Before the Board of Patent Appeals and Interferences in Ex 
Parte Appeals 76 FR 72270, 72273 (November 22, 2011). Accordingly, for 
purposes of calculating patent term adjustment based upon appellate 
review, the impact of the rule change would be to reduce the amount of 
patent term adjustment awarded for

[[Page 81433]]

successful appeal under 35 USC 154(b)(1)(C)(iii). However, the impact 
may be offset by potentially increasing the amount of patent term 
adjustment awarded for failing to issue the patent within three years 
of the actual filing date in the United States under 35 USC 
154(b)(1)(B). The patent term adjustment award for the three year 
provision may increase when the examiner reopens prosecution after a 
notice of appeal is filed (e.g., following a pre-appeal conference or 
an appeal conference) and the patent issues thereafter, because the 
period of time between the filing of the notice of appeal and the 
examiner's reopening of prosecution would no longer be deducted under 
35 USC 154(b)(1)(B)(ii).

DATES: Comment Deadline Date: Written comments must be received on or 
before January 27, 2012. No public hearing will be held.

ADDRESSES: Comments concerning this notice should be sent by electronic 
mail message over the Internet addressed to AC63.comments@uspto.gov. 
Comments may also be submitted by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA, 22313-1450, marked to the attention of Kery A. Fries, Senior Legal 
Advisor, Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy. Although comments may be 
submitted by mail, the Office prefers to receive comments via the 
Internet.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Internet (https://www.uspto.gov). Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor, 
Office of Patent Legal Administration, by telephone at (571) 272-7757, 
by mail addressed to: Box Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Kery A. Fries.

SUPPLEMENTARY INFORMATION: The Uruguay Round Agreements Act (URAA) 
amended 35 U.S.C. 154 to provide that the term of a patent ends on the 
date that is twenty years from the filing date of the application, or 
the earliest filing date for which a benefit is claimed under 35 U.S.C. 
120, 121, or 365(c). See Public Law 103-465, Sec.  532(a)(1), 108 Stat. 
4809, 4983-85 (1994). The URAA also contained provisions, codified at 
35 U.S.C. 154(b), for patent term extension due to certain examination 
delays. Under the patent term extension provisions of 35 U.S.C. 154(b) 
as amended by the URAA, an applicant is entitled to patent term 
extension for delays due to interference, secrecy order, or successful 
appellate review. See 35 U.S.C. 154(b) (1995). The Office implemented 
the patent term extension provisions of the URAA in a final rule 
published in April of 1995. See Changes to Implement 20-Year Patent 
Term and Provisional Applications, 60 FR 20195 (Apr. 25, 1995) (twenty-
year patent term final rule).
    The American Inventors Protection Act of 1999 (AIPA) further 
amended 35 U.S.C. 154(b) to expand the list of administrative delays 
which may give rise to patent term adjustment (characterized as 
``patent term adjustment'' in the AIPA). See Public Law 106-113, 113 
Stat. 1501, 1501A-552 through 1501A-591 (1999). Specifically, under the 
patent term adjustment provisions of 35 U.S.C. 154(b) as amended by the 
AIPA, an applicant is entitled to patent term adjustment for the 
following reasons: (1) If the Office fails to take certain actions 
during the examination and issue process within specified time frames 
(known as the ``A'' provision, being in 35 U.S.C. 154(b)(1)(A)); (2) if 
the Office fails to issue a patent within three years of the actual 
filing date of the application in the United States (known as the ``B'' 
provision, being in 35 U.S.C. 154(b)(1)(B)); and (3) for delays due to 
interference, secrecy order, or successful appellate review (known as 
the ``C'' provision, being in 35 U.S.C. 154(b)(1)(C)). See 35 U.S.C. 
154(b)(1). The Office implemented the patent term adjustment provisions 
of 35 U.S.C. 154(b) as amended by the AIPA in a final rule published in 
September of 2000. See Changes to Implement Patent Term Adjustment 
Under Twenty-Year Patent Term, 65 FR 56365 (Sept. 18, 2000) (patent 
term adjustment final rule).
    The patent term adjustment provisions of the AIPA apply to original 
(i.e., non-reissue) utility and plant applications filed on or after 
May 29, 2000. See Changes to Implement Patent Term Adjustment Under 
Twenty-Year Patent Term, 65 FR at 56367. The patent term extension 
provisions of the URAA (for delays due to secrecy order, interference 
or successful appellate review) continue to apply to original utility 
and plant applications filed on or after June 8, 1995, and before May 
29, 2000. See id.
    In April 2011 the Office proposed to revise the patent term 
extension and adjustment provisions of the URAA and AIPA to provide, 
with certain exceptions, that the reopening of prosecution by an 
examiner would be considered a ``decision in the review reversing an 
adverse determination of patentability,'' since in many such situations 
the reopening of the application after a notice of appeal has been 
filed is the result of a decision in the pre-BPAI review that there is 
some weakness in the adverse patentability determination from which the 
appeal was taken, making it appropriate to treat such situations as a 
``decision in the review reversing an adverse determination of 
patentability'' under the patent term adjustment and extension 
provisions. See Revision of Patent Term Extension and Adjustment 
Provisions Relating to Appellate Review and Information Disclosure 
Statements, 76 FR 18990 (Apr. 6, 2011). The Office received several 
comments suggesting that a better approach would be to treat the 
appellate review period as beginning when jurisdiction passes to the 
BPAI, rather than on the date a notice of appeal to the BPAI was filed. 
This approach would give applicants the possibility of obtaining patent 
term adjustment under the ``B'' provision for Office delays during the 
pre-BPAI process (including when prosecution is reopened). 
Specifically, the Office would not subtract from the ``B'' period the 
period of time from the filing of the notice of appeal to the earlier 
of the filing of a reply brief or the expiration of the period to file 
the reply brief. The Office has decided to seek public comment on this 
approach. Accordingly, the Office is proposing to change its 
interpretation of the appellate review language of the ``B'' provision 
(35 U.S.C. 154(b)(1)(B)(ii)), and provide that appellate review begins 
on the date on which jurisdiction over the application passes to the 
Board of Patent Appeals and Interferences under 37 CFR 41.35 (rather 
than the date on which a notice of appeal under 35 U.S.C. 134 was filed 
as in the current rule).
    The ``B'' provision provides for the possibility of patent term 
adjustment ``if the issue of an original patent is delayed due to the 
failure of the United States

[[Page 81434]]

Patent and Trademark Office to issue a patent within 3 years after the 
actual filing date of the application in the United States.'' 35 U.S.C. 
154(b)(1)(B). The ``B'' provision also provides that certain periods 
are not included in determining whether the issue of a patent is 
delayed due to the failure of the Office to issue the patent within 
three years of its filing date, one of such periods being ``any time 
consumed by appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court.'' 35 U.S.C. 154(b)(1)(B)(ii). 
Since the period of appellate review by the BPAI or a Federal court is 
not included in determining whether the issue of a patent is delayed 
due to the failure of the Office to issue the patent within three years 
of its filing date under the ``B'' provision, a later beginning of the 
appellate review by the BPAI, as now being proposed, would result in 
the possibility of a greater period of patent term adjustment under the 
``B'' provision vis-[agrave]-vis the Office's interpretation of this 
provision in 2000.
    The ``C'' provision provides for the possibility of patent term 
adjustment ``if the issue of an original patent is delayed due to'' 
inter alia ``appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court in a case in which the patent was 
issued under a decision in the review reversing an adverse 
determination of patentability.'' 35 U.S.C 154(b)(1)(C). The Office is 
also proposing to change its interpretation of the appellate review 
language of the ``C'' provision (35 U.S.C. 154(b)(1)(C)(iii)). To 
change the interpretation of the appellate review language of the ``B'' 
provision without also changing the appellate review language of the 
``C'' provision would be difficult to justify because it would require 
the Office to interpret the same statutory term, ``appellate review by 
the Board,'' appearing in two closely related provisions, in two 
different ways. Doing so violates the well-recognized canon of 
statutory interpretation that the same terms appearing in related 
statutory provisions are to be given the same meaning. See, e.g., Yi v. 
Fed. Bureau of Prisons, 412 F.3d 526, 531 (4th Cir. 2005). Since the 
period of adjustment under the appellate review portion of the ``C'' 
provision is the period of appellate review by the BPAI or by a Federal 
court, a later beginning of the appellate review by the BPAI, as now 
being proposed, would result in the possibility of a lesser period of 
patent term adjustment under the ``C'' provision vis-[agrave]-vis the 
Office's interpretation of this provision in 2000.
    The Office recognizes that there is a question as to whether the 
URAA should be considered instructive in interpreting the ``C'' 
provisions of 35 U.S.C. 154(b) as amended by the AIPA. The Office has, 
until now, treated the AIPA patent term adjustment provisions as an 
extension of, rather than a replacement for, the URAA patent term 
extension provisions. The AIPA (like the URAA) provided patent term 
adjustment for delays caused by secrecy order, interference 
proceedings, and successful appellate review (the ``C'' provision), 
with the legislative history characterizing this provision as the 
``existing'' provisions. See H.R. Rep. No. 106-464, at 125 (1999). The 
appellate review provision of the URAA provides for patent term 
extension if ``the issue of a patent is delayed due to appellate review 
by the Board of Patent Appeals and Interferences or by a Federal court 
and the patent is issued pursuant to a decision in the review reversing 
an adverse determination of patentability,'' and specifically defines 
the period of appellate review as ``includ[ing] any period beginning on 
the date on which an appeal is filed under section 134 or 141 of this 
title, or on which an action is commenced under section 145 of this 
title, and ending on the date of a final decision in favor of the 
applicant.'' See 35 U.S.C. 154(b)(2) and 154(b)(3)(A) as amended by 
Sec.  532(a) of the URAA, 108 Stat. at 4984.
    Since the appellate review provisions of the AIPA use the same 
phrase as the URAA appellate review provision (``appellate review by 
the Board of Patent Appeals and Interferences or by a Federal court'') 
and the AIPA provides no alternative definition of the date that is the 
beginning of the period of appellate review by the BPAI or by a Federal 
court, the Office originally interpreted the beginning of the pendency 
of ``appellate review by the Board of Patent Appeals and Interferences 
or by a Federal court'' (35 U.S.C. 154(b)(1)(C)(iii)) using the 
guidance provided in 35 U.S.C. 154(b)(3)(A) as amended by the URAA for 
the beginning of the period of appellate review, namely that the 
beginning of the period of appellate review is the date on which an 
appeal to the BPAI is filed under 35 U.S.C. 134. See Changes to 
Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR, 
17215, 17218 and 17227 (Mar. 31, 2000). The USPTO did not receive any 
comment on its original interpretation of this provision. Finally, the 
U.S. Court of Appeals for the Federal Circuit has also in passing 
characterized the ``C'' provision of the 35 U.S.C. 154(b)(1)(C) as the 
patent term extension provisions of the URAA. See Wyeth v. Kappos, 591 
F.3d 1364, 1372 (Fed. Cir. 2010) (``Before enactment of the AIPA, 
section 154(b) only provided extensions for the category that now fall 
under the C adjustments'').
    The Office has reconsidered its prior position and now believes 
that the better view is that the URAA's express definition of the 
appellate-review period should not carry over to the ``C'' provision of 
AIPA, because the URAA definition is completely absent from the AIPA. 
It is a canon of statutory construction that Congress is presumed to 
intend its statutory amendments to have ``real and substantial 
effect.'' Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 
258-59 (2004). Thus, when Congress deletes a term or provision from a 
statute, it is inappropriate to read that term or provision back into 
the statute. See id. (holding that because Congress amended 28 U.S.C. 
1782(a) to delete the requirement that proceedings covered by the 
statute be ``pending,'' Court rejected view that this statute comes 
into play only for pending proceedings). Likewise, the Office now 
believes that it is not appropriate to read back into the ``C'' 
provision of the AIPA the appellate-review definition that Congress 
deleted from Title 35. Therefore, the Office is also proposing to 
change its interpretation of the appellate review language of the ``C'' 
provision (35 U.S.C. 154(b)(1)(C)(iii)), and also to provide that 
appellate review begins on the date on which jurisdiction over the 
application passes to the BPAI under 37 CFR 41.35 (rather than the date 
on which a notice of appeal under 35 U.S.C. 134 was filed as in the 
current rule).
    The AIPA also sets forth a number of conditions and limitations on 
any patent term adjustment accrued under 35 U.S.C. 154(b)(1). 
Specifically, 35 U.S.C. 154(b)(2)(C) provides, in part, that ``[t]he 
period of adjustment of the term of a patent under [35 U.S.C. 
154(b)(1)] shall be reduced by a period equal to the period of time 
during which the applicant failed to engage in reasonable efforts to 
conclude prosecution of the application'' and that ``[t]he Director 
shall prescribe regulations establishing the circumstances that 
constitute a failure of an applicant to engage in reasonable efforts to 
conclude processing or examination of an application.'' 35 U.S.C. 
154(b)(2)(C)(i) and (iii). The rules of practice (37 CFR 41.37) require 
that an appeal brief be filed within two months from the date of filing 
of the notice of appeal under 35 U.S.C. 134

[[Page 81435]]

and 37 CFR 41.31. An applicant, however, may delay or prevent the 
passing of jurisdiction of the application to the BPAI by: (1) 
Obtaining an extension of time to file the appeal brief; (2) filing an 
appeal brief that does not comply with the requirements of 37 CFR 
41.37; or (3) seeking further prosecution before the examiner by filing 
a request for continued examination under 37 CFR 1.114. Therefore, the 
Office is proposing, under its authority under 35 U.S.C. 154(b)(2)(C), 
to provide that the failure to file an appeal brief in compliance with 
37 CFR 41.37 within two months from the date on which a notice of 
appeal to the BPAI was filed under 35 U.S.C. 134 and 37 CFR 41.31 
constitutes a failure of an applicant to engage in reasonable efforts 
to conclude processing or examination of an application.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.703: Section 1.703(b)(4), which defines the period of 
appellate review in 35 U.S.C. 154(b)(1)(B)(ii), is amended to define 
this period as the sum of the number of days, if any, in the period 
beginning on the date on which jurisdiction over the application passes 
to the BPAI under Sec.  41.35 of this title and ending on the date of a 
final decision in favor of the applicant by the BPAI or by a Federal 
court in an appeal under 35 U.S.C. 141 or a civil action under 35 
U.S.C. 145. Section 1.703(b)(4) currently defines this period as 
beginning on the date on which a notice of appeal to the BPAI was filed 
under 35 U.S.C. 134 and Sec.  41.31.
    Section 1.703(e), which defines the period of appellate review in 
35 U.S.C. 154(b)(1)(C)(iii), is amended to define this period as the 
sum of the number of days, if any, in the period beginning on the date 
on which jurisdiction over the application passes to the BPAI under 
Sec.  41.35 of this title and ending on the date of a final decision in 
favor of the applicant by the BPAI or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. Section 
1.703(e) currently defines this period as beginning on the date on 
which a notice of appeal to the BPAI was filed under 35 U.S.C. 134 and 
Sec.  41.31.
    Section 1.704: Section 1.704(c) is amended to provide that the 
failure to file an appeal brief in compliance with Sec.  41.37 within 
two months from the date on which a notice of appeal to the BPAI was 
filed under 35 U.S.C. 134 and Sec.  41.31 constitutes a failure of an 
applicant to engage in reasonable efforts to conclude processing or 
examination of an application. Section 1.704(c) would also provide that 
in such a case the period of adjustment set forth in Sec.  1.703 shall 
be reduced by the number of days, if any, beginning on the day after 
the date two months from the date on which a notice of appeal to the 
Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 
and Sec.  41.31 of this title and ending on the date an appeal brief 
was filed in compliance with 41.37 or a request for continued 
examination was filed in compliance with Sec.  1.114.

Rule Making Considerations:

    A. Regulatory Flexibility Act: For the reasons set forth herein, 
the Deputy General Counsel for General Law of the United States Patent 
and Trademark Office has certified to the Chief Counsel for Advocacy of 
the Small Business Administration that changes proposed in this notice 
will not have a significant economic impact on a substantial number of 
small entities. See 5 U.S.C. 605(b).
    The changes to the rules of practice proposed in this notice: (1) 
Revise the provisions that define the beginning and ending dates of the 
period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 
154(b)(1)(C)(iii) to provide that this period begins on the date on 
which jurisdiction over the application passes to the BPAI under 37 CFR 
41.35; and (2) provide that that the failure to file a proper appeal 
brief within two months from the date on which a notice of appeal to 
the BPAI was filed, as required by 35 U.S.C. 134, constitutes a failure 
of an applicant to engage in reasonable efforts to conclude processing 
or examination of an application. This notice does not propose to add 
any additional requirements (including information collection 
requirements) or fees for patent applicants or patentees.
    The proposed changes to 37 CFR 1.703(b)(4) and (e) merely 
reinterpret the beginning and ending dates of the period of appellate 
review under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii). They do 
not impose any additional burden on applicants. The proposed change to 
37 CFR 1.704(c) specifies that the failure to file a proper appeal 
brief within two months from the date on which a notice of appeal to 
the BPAI was filed, as required by 35 U.S.C. 134, constitutes failure 
of an applicant to engage in reasonable efforts to conclude processing 
or examination of an application would not have will not have a 
significant economic impact on a substantial number of small entities 
because: (1) applicants are not entitled to patent term adjustment for 
examination delays that result from their delay in prosecuting the 
application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR 1.704(a)); and (2) 
applicants may avoid any consequences from this provision simply by 
filing an appeal brief in compliance with 37 CFR 41.37 (or filing a 
request for continued examination under 37 CFR 1.114) within two months 
from the date on which a notice of appeal to the BPAI was filed as 
required by 35 U.S.C. 134 and Sec.  41.31.
    For the foregoing reasons, neither of the changes proposed in this 
notice will have a significant economic impact on a substantial number 
of small entities.
    B. Executive Order 12866 (Regulatory Planning and Review): This 
rule making has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    C. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rule making docket; (7) attempted to 
promote coordination, simplification and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    D. Executive Order 13132 (Federalism): This rule making does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    E. Executive Order 13175 (Tribal Consultation): This rule making 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not

[[Page 81436]]

required under Executive Order 13175 (Nov. 6, 2000).
    F. Executive Order 13211 (Energy Effects): This rule making is not 
a significant energy action under Executive Order 13211 because this 
rule making is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    G. Executive Order 12988 (Civil Justice Reform): This rule making 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rule making 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This rule 
making will not effect a taking of private property or otherwise have 
taking implications under Executive Order 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the U.S. 
Senate, the U.S. House of Representatives and the Comptroller General 
of the Government Accountability Office. The changes in this notice are 
not expected to result in an annual effect on the economy of 100 
million dollars or more, a major increase in costs or prices, or 
significant adverse effects on competition, employment, investment, 
productivity, innovation, or the ability of United States-based 
enterprises to compete with foreign-based enterprises in domestic and 
export markets. Therefore, this notice is not expected to result in a 
``major rule'' as defined in 5 U.S.C. 804(2).
    K. Unfunded Mandates Reform Act of 1995: The changes proposed in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    L. National Environmental Policy Act: This rule making will not 
have any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rule making does not contain provisions which involve the use of 
technical standards.
    N. Paperwork Reduction Act: The rules of practice pertaining to 
patent term adjustment and extension have been reviewed and approved by 
the Office of Management and Budget (OMB) under the Paperwork Reduction 
Act of 1995 (44 U.S.C. 3501 et seq.) under OMB control number 0651-
0020. The changes to the rules of practice proposed in this notice: (1) 
Revise the provisions that define the beginning and ending dates of the 
period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 
154(b)(1)(C)(iii) to provide that this period begins on the date on 
which jurisdiction over the application passes to the BPAI under 37 CFR 
41.35; and (2) provide that that the failure to file a proper appeal 
brief within two months from the date on which a notice of appeal to 
the BPAI was filed, as required by 35 U.S.C. 134, constitutes a failure 
of an applicant to engage in reasonable efforts to conclude processing 
or examination of an application. This notice does not propose to add 
any additional requirements (including information collection 
requirements) or fees for patent applicants or patentees. Therefore, 
the Office is not resubmitting information collection packages to OMB 
for its review and approval because the changes proposed in this notice 
do not affect the information collection requirements associated with 
the information collections approved under OMB control number 0651-0020 
or any other information collections.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall any person be subject to a penalty for failure 
to comply with a collection of information subject to the requirements 
of the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).
    2. Section 1.703 is amended by revising paragraph (b)(4) and (e) to 
read as follows:


Sec.  1.703  Period of adjustment of patent term due to examination 
delay.

* * * * *
    (b) * * *
    (4) The number of days, if any, in the period beginning on the date 
on which jurisdiction over the application passes to the Board of 
Patent Appeals and Interferences under Sec.  41.35 of this title and 
ending on the date of the last decision by the Board of Patent Appeals 
and Interferences or by a Federal court in an appeal under 35 U.S.C. 
141 or a civil action under 35 U.S.C. 145.
* * * * *
    (e) The period of adjustment under Sec.  1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which 
jurisdiction over the application passes to the Board of Patent Appeals 
and Interferences under Sec.  41.35 of this title and ending on the 
date of a final decision in favor of the applicant by the Board of 
Patent Appeals and Interferences or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
* * * * *
    3. Section 1.704 is amended by redesignating paragraph (c)(9) 
through (c)(11) as (c)(10) through (c)(12), respectively, and adding a 
new paragraph (c)(9) to read as follows:


Sec.  1.704  Reduction of period of adjustment of patent term.

* * * * *
    (c) * * *
    (9) Failure to file an appeal brief in compliance with Sec.  41.37 
within two months from the date on which a notice of appeal to the 
Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 
and Sec.  41.31 of this title, in which case the period of adjustment 
set forth in Sec.  1.703 shall be reduced by the number of days, if 
any, beginning on the day after the date two months from the date on 
which a notice of appeal to the

[[Page 81437]]

Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 
and Sec.  41.31 of this title and ending on the date an appeal brief in 
compliance with 41.37 or a request for continued examination in 
compliance with Sec.  1.114 was filed;
* * * * *

    Dated: December 15, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-33150 Filed 12-27-11; 8:45 am]
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