Revision of Patent Term Adjustment Provisions Relating to Appellate Review, 49354-49360 [2012-20238]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 77, Number 159 (Thursday, August 16, 2012)]
[Rules and Regulations]
[Pages 49354-49360]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-20238]



[[Page 49354]]

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DEPARTMENT OF COMMERCE

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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the patent term adjustment provisions of the rules of practice 
in patent cases to better reflect the period of appellate review. 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 (Board) 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 
specifically revising 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 Board 
rather than the date on which a notice of appeal to the Board is filed.

DATES: Effective date: This final rule is effective September 17, 2012.
    Applicability date: The amendments to 37 CFR 1.703 in this final 
rule are applicable to any application in which a notice of allowance 
is issued on or after September 17, 2012, and any patent issuing 
thereon. The amendment to 37 CFR 1.704 is applicable with respect to 
the filing of an appeal brief in any application in which a notice of 
appeal under 37 CFR 41.31 is filed on or after September 17, 2012.

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:

Executive Summary

    Purpose: The Office is revising the patent term adjustment 
provisions of the rules of practice in patent cases to better reflect 
the period of appellate review.
    Summary of Major Provisions: The final rule will result in patent 
term adjustment determinations that better reflect any delays an 
application experiences during the appellate review process. The final 
rule defines the day that an appellate review period begins for patent 
term adjustment purposes as the day that jurisdiction over the patent 
application passes to the Board. Also, the final rule provides 
applicants with a three-month time period for filing a compliant appeal 
brief before the Office will consider applicant as having failed to 
engage in reasonable efforts to conclude processing or examination of 
the application.
    Costs and Benefits: This rulemaking is not significant or 
economically significant under Executive Order 12866 (Sept. 30, 1993), 
as amended by Executive Order 13258 (Feb. 26, 2002) and Executive Order 
13422 (Jan. 18, 2007).

Background

    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) 
subject to certain enumerated examples, 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 Office decision in the pre-Board review reveals 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 
Board, rather than on the date a notice of appeal to the Board was 
filed. This approach would give applicants the possibility of obtaining 
patent term adjustment under the ``B'' provision for Office delays 
during the pre-Board

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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.
    In November 2011, the Office published a final rule concerning 
practice before the Board in ex parte appeals, and defined that 
jurisdiction of an appeal passes to the Board at the earlier of the 
filing of the reply brief or upon the expiration of the time period for 
filing a reply brief. See Rules Of Practice Before the Board of Patent 
Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (Nov. 
2011).
    In December 2011, the Office published a notice seeking public 
comment on a proposal to change its interpretation of the appellate 
review language of the ``B'' provision (35 U.S.C. 154(b)(1)(B)(ii)) to 
provide that appellate review begins on the date on which jurisdiction 
over the application passes to the Board 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). See Revision of Patent Term Extension and 
Adjustment Provisions Relating to Appellate Review, 76 FR 81432 (Dec. 
28, 2011). The December 2011 notice of proposed rulemaking indicated 
that to change the interpretation of the appellate review language of 
the ``B'' provision without also changing the appellate review language 
of the ``C'' provision (35 U.S.C. 154(b)(1)(C)(iii)) 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, violating well-recognized canon of statutory interpretation that 
the same terms appearing in related statutory provisions are to be 
given the same meaning. See Revision of Patent Term Extension and 
Adjustment Provisions Relating to Appellate Review, 76 FR at 81434 
(citing Yi v. Fed. Bureau of Prisons, 412 F.3d 526, 531 (4th Cir. 
2005)). The December 2011 notice of proposed rulemaking further 
indicated a later beginning of the appellate review by the Board, as 
was 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, but 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. See id. 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 a successful appeal under 35 U.S.C. 
154(b)(1)(C)(iii) by beginning the appellate review period at the time 
the Board assumes jurisdiction of the appeal. Any negative impact to 
applicant, however, may be offset by potentially increasing the amount 
of patent term adjustment awarded for the Office failing to issue the 
patent within three years of the actual filing date in the United 
States under 35 U.S.C. 154(b)(1)(B) (`` `B' delay''). For example, the 
patent term adjustment awarded pursuant to the ``B'' delay 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 U.S.C. 
154(b)(1)(B)(ii).
    The December 2011 notice of proposed rulemaking also indicated that 
the AIPA sets forth a number of conditions and limitations on any 
patent term adjustment accrued under 35 U.S.C. 154(b)(1). See Revision 
of Patent Term Extension and Adjustment Provisions Relating to 
Appellate Review, 76 FR at 81434-35. 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 and 37 CFR 41.31, with extensions available 
pursuant to 37 CFR 1.136 and 1.550(c). An applicant, however, may delay 
or prevent the passing of jurisdiction of the application to the Board 
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 providing, under its authority in this final 
rule under 35 U.S.C. 154(b)(2)(C), that the failure to file an appeal 
brief in compliance with 37 CFR 41.37 within three months from the date 
on which a notice of appeal to the Board 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 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 Board under Sec.  41.35(a) of this title and ending on the date 
that jurisdiction ends under Sec.  41.35(b) of this title or the date 
of the last decision by a Federal court in an appeal under 35 U.S.C. 
141 or a civil action under 35 U.S.C. 145, whichever is later. Section 
1.703(b)(4) formerly defined this period as beginning on the date on 
which a notice of appeal to the Board 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 Board under 
Sec.  41.35(a) of this title and ending on the date of a final decision 
in favor of the applicant by the Board 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) formerly defined this period as beginning on the date 
on which a notice of appeal to the Board 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 
three months from the date on which a notice of appeal to the Board 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 that is three months from the day on which a notice of appeal 
to the Board was filed under 35 U.S.C. 134 and Sec.  41.31 of this 
title and ending on

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the date an appeal brief was filed in compliance with Sec.  41.37 or a 
request for continued examination was filed in compliance with Sec.  
1.114. Section 1.704(c) also renumbers current Sec.  1.704(c)(11) as 
new Sec.  1.704(c)(12).
    As discussed previously, the changes to Sec.  1.703 in this final 
rule are applicable to any application in which a notice of allowance 
is issued on or after September 17, 2012, and any patent issuing 
thereon, and the change to Sec.  1.704 is applicable with respect to 
the filing of an appeal brief in any application in which a notice of 
appeal under Sec.  41.31 is filed on or after September 17, 2012.
    The Office will also apply the changes to Sec.  1.703 in this final 
rule in any timely patent term adjustment reconsideration proceeding 
that is initiated on or after September 17, 2012. To allow patentees to 
take advantage of this final rule, and for purposes limited to this 
final rule, such patent term adjustment reconsideration proceedings 
shall be the following timely filed proceedings initiated on or after 
September 17, 2012: (1) Reconsideration proceedings initiated pursuant 
to a remand from a timely filed civil action in Federal court; (2) 
reconsideration proceedings initiated pursuant to a timely request for 
reconsideration of the patent term adjustment indicated in the patent 
under Sec.  1.705(d) in which the patentee argues that the change to 
Sec.  1.703 in this final rule is applicable to his or her patent; and 
(3) reconsideration proceedings initiated pursuant to a request for 
reconsideration that seeks reconsideration of the Office's decision 
under Sec.  1.705(d) regarding patent term adjustment under the 
Office's former interpretation of the appellate review language of 35 
U.S.C. 154(b)(1)(B)(ii) and (C)(iii), if such request is filed within 
two months of the date of the decision for which reconsideration is 
requested (Sec.  1.181(f)). Section 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 Sec. Sec.  1.705(b)(1) 
and (b)(2).

Comments and Response to Comments

    As discussed previously, the Office published a notice on December 
28, 2011, proposing to change the rules of practice pertaining to 
patent term adjustment to: (1) Indicate that the period of appellate 
review under the patent term provisions of the AIPA begins when 
jurisdiction over the application passes to the Board rather than when 
the notice of appeal is filed;
    (2) Indicate that the provisions relating to the ``B'' delay under 
35 U.S.C 154(b)(1)(B) will reduce the amount of ``B'' delay for the 
period beginning from the date of the notice of appeal until the 
earlier of the filing of a reply brief or the expiration of the period 
to file the reply brief; and (3) introduce a new type of applicant 
delay for the applicant's failure to file a compliant appeal brief 
within two months of the filing of a notice of appeal. See Revision of 
Patent Term Adjustment Provisions Relating to Appellee Review, 76 FR 
81432-37. The Office received comments from four commenters.
    Comment 1: One comment suggested that the Office not consider it a 
failure of an applicant to engage in reasonable efforts to conclude 
processing or examination of an application under proposed Sec.  
1.704(c)(9) (Sec.  1.704(c)(11) as adopted) unless more than three 
months has passed from the filing of the notice of appeal until a 
compliant appeal brief is filed. The comment urges that preparing an 
appeal brief requires considerable effort and the standard should be 
the same as for responses to an Office action.
    Response: As suggested in the comment, the Office is revising the 
provision to provide that it will be considered a failure of an 
applicant to engage in reasonable efforts to conclude processing or 
examination of an application under Sec.  1.704(c)(11) if the applicant 
takes more than three months from the date of the filing of the notice 
of appeal to file a compliant appeal brief. The Office finds that the 
three-month period would be equivalent to the statutory time provided 
an applicant to respond to a notice from the Office making any 
rejection, objection, argument, or other request before applicant is 
deemed to have failed to engage in reasonable efforts to conclude 
processing or examination of the application under 35 U.S.C. 
154(b)(2)(C)(ii).
    Comment 2: Two comments suggested that the Office should not 
retroactively apply the provisions of proposed Sec.  1.704(c)(9) (Sec.  
1.704(c)(11) as adopted) to any notice of appeal that is filed prior to 
the final enactment of the provision.
    Response: As suggested in the comments, the Office will apply the 
provision of 1.704(c)(11) only with respect to an appeal brief in which 
the notice of appeal was filed on or after September 17, 2012.
    Comment 3: One comment requested clarification of the patent term 
adjustment effect under proposed Sec.  1.704(c)(9) (Sec.  1.704(c)(11) 
as adopted) if the examiner reopens prosecution before a compliant 
appeal brief is filed, but more than two months after a notice of 
appeal was filed.
    Response: The Office proposed that if more than two months passed 
from the date a notice of appeal is filed until the date a compliant 
appeal brief is filed, the Office would assess an applicant delay. The 
Office has decided not to assess applicant delay under 1.704(c)(11) 
unless three months has passed from the date a notice of appeal is 
filed until the date a compliant brief is filed. If the Office reopens 
prosecution after three months from the applicant's filing of the 
notice of appeal but prior to applicant's submission of a compliant 
appeal brief under Sec.  41.37, the Office would not find any applicant 
delay under Sec.  1.704(c)(11). Moreover, the Office would not deem the 
reopening of the prosecution as vacating any previous filed response 
that potentially increases patent term adjustment under 35 U.S.C. 
154(b)(1)(A)(i) through (iv). Reopening prosecution after the notice of 
appeal may increase pendency of the application and under certain 
circumstances result in patent term adjustment under 35 U.S.C. 
154(b)(1)(B).
    Comment 4: One comment requested clarification of whether the two-
month period under proposed Sec.  1.704(c)(9) (three-month period of 
Sec.  1.704(c)(11) as adopted) would be extendable for weekends and 
holidays under ArQule v. Kappos, 793 F.Supp.2d 214 (D.D.C. 2011).
    Response: Deadlines for patent term adjustment will be calculated 
pursuant to 35 U.S.C. 21(b) since the Office is establishing a time 
frame for taking action. If the last day of the three-month period set 
forth in 1.704(c)(11) as adopted falls on a Saturday, Sunday, or a 
Federal holiday within the District of Columbia, an applicant would be 
able to file the appeal brief on the next succeeding secular or 
business day without reduction of patent term adjustment under Sec.  
1.704(c)(11). For example, if a notice of appeal were filed on Friday, 
May 18, 2012, such that the three-month deadline fell on Saturday, 
August 18, 2012, and the appeal brief were filed on Monday, August 20, 
2012, applicant would not receive any reduction of patent term 
adjustment under Sec.  1.704(c)(11) because the three-month date fell 
on a Saturday. If applicant filed the compliant appeal brief on 
Tuesday, August 21, 2012, applicant would be assessed a one-day patent 
term adjustment reduction under Sec.  1.704(c)(11).
    Comment 5: One comment requested clarification of whether a 
response to a non-compliant appeal brief will be

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considered a supplemental response under Sec.  1.704(c)(8).
    Response: The filing of a compliant appeal brief under 41.37 after 
a non-compliant appeal brief has been filed is not considered a 
supplemental reply under Sec.  1.704(c)(8). Moreover, the Office will 
not consider it to be an omission under Sec.  1.704(c)(7). However, it 
will be considered a failure of an applicant to engage in reasonable 
efforts to conclude processing or examination of an application under 
Sec.  1.704(c)(11) if the compliant appeal brief is not filed within 
three months of the date of the notice of appeal, regardless of the 
filing of a non-compliant appeal brief.
    Comment 6: Two comments requested clarification as to the patent 
term adjustment consequences of filing an information disclosure 
statement or an amendment after the notice of appeal has been filed.
    Response: There will be a reduction of patent term adjustment if 
the applicant submits an information disclosure statement pursuant to 
Sec.  1.97(c) or an amendment under Sec.  41.33 after a notice of 
appeal has been filed but prior to jurisdiction passing to the Board 
under Sec.  1.704(c)(8). Under Sec.  1.97(c), an applicant who submits 
an information disclosure statement meeting the requirements of 
Sec. Sec.  1.97 and 1.98 will have such submission considered by the 
examiner if it is accompanied by a statement under Sec.  1.97(e) and 
the fee under Sec.  1.17(p). Moreover, the Office may consider an 
amendment under Sec.  41.33(a) and (b) if it meets the requirements for 
consideration. As Sec.  1.703(b)(4) would no longer treat the period of 
time between the notice of appeal and the date that jurisdiction passes 
to the Board as being excluded from the ``B'' period, an applicant may 
increase ``B'' delay by taking actions that extend the period between 
the notice of appeal and the date that jurisdiction passes to the 
Board. Accordingly, treating the IDS and amendments filed after a 
notice of appeal as an applicant delay under (c)(8) will discourage 
attempts to increase ``B'' delay, and accordingly, the Office will so 
treat them.
    Comment 7: One comment suggested that an applicant should be 
entitled to patent term adjustment if the Office does not respond to a 
request for a pre-appeal review within 45 days.
    Response: The suggestion was not adopted. 35 U.S.C. 154(b)(1)(A) 
provides conditions under which an applicant is entitled to patent term 
adjustment due to delayed responses by the Office, but does not provide 
patent term adjustment for the situation suggested in the comment. 35 
U.S.C. 154(b)(1)(A)(ii) requires that the Office respond to an appeal 
within four months after the date on which the appeal was taken. The 
Office implemented this patent term adjustment provision in September 
2000, and indicated that the phrase ``appeal taken'' means the date of 
the filing of an appeal brief in compliance with Sec.  41.37. See 
Changes to Implement Patent Term Adjustment Under the Twenty-Year 
Patent Term, 65 FR 56366, 56368 (Sept. 18, 2000).
    Comment 8: One comment suggested that the applicant should be 
entitled to patent term adjustment if the Office does not mail either 
an examiner's answer or a notice of non-compliant appeal brief within 
two months of the filing of the appeal brief.
    Response: The suggestion was not adopted. 35 U.S.C. 154(b)(1)(A) 
provides conditions upon which an application is entitled additional 
patent term adjustment due to delayed responses by the Office, and does 
not provide patent term adjustment on this basis. As discussed 
previously, 35 U.S.C. 154(b)(1)(A)(ii) requires that the Office respond 
to an appeal within four months after the date on which the appeal was 
taken. Accordingly, the Office could not provide patent term adjustment 
on the basis suggested in the comment.
    Comment 9: One comment requested clarification as to whether the 
applicant is entitled to patent term adjustment if a supplemental 
examiner's answer or acknowledgment of the reply brief by the examiner 
is delayed.
    Response: The Office recently revised the appeal rules to reduce 
the period of time before the application is transferred to the Board. 
See Rules of Practice Before the Board of Patent Appeals and 
Interferences in Ex Parte Appeals, 76 FR 72270, 72271 (Nov. 22, 2011). 
Under the revised rules, the examiner will no longer acknowledge the 
reply brief or mail a supplemental examiner's answer in response to the 
reply brief. As a result, the Board takes jurisdiction over the 
proceeding upon the earlier of the filing of the reply brief under 
Sec.  41.41 or the expiration of the period of time in which applicant 
may file a reply brief. See Sec.  41.35(a). Accordingly, the issue is 
moot in light of the changes to the appeal rules.
    Comment 10: One comment sought clarification as to the date that 
the file is transferred to the Board under Sec.  41.35 in order to 
calculate patent term adjustment under 35 U.S.C. 154(b)(1)(C)(iii).
    Response: The Office recently revised the ex parte appeal rules, 
which no longer define the date that the Board assumes jurisdiction of 
the appeal as the date that the file is transferred to the Board. See 
Rules of Practice Before the Board of Patent Appeals and Interferences 
in Ex Parte Appeals, 76 FR at 72271. Jurisdiction now passes to the 
Board upon the earlier of the date of filing of the reply brief under 
Sec.  41.41 or when the period for filing of the reply brief has 
expired. See Sec.  41.35(a). The change to the ex parte appeal rules 
provides clarity as to when jurisdiction is passed and when the 
application is deemed to be under appellate review by the Board for 
purposes of 35 U.S.C. 154(b)(1)(C)(iii).
    Comment 11: One comment sought clarification as to whether the 
applicant is entitled to patent term adjustment if an examiner reopens 
prosecution of the application.
    Response: The applicant is not entitled to patent term adjustment 
for the reopening of prosecution of the application per se. However, 
under certain circumstances, the reopening of prosecution by the 
examiner may lead to additional patent term adjustment under 35 U.S.C. 
154(b)(1)(B) because the period of time from the filing of the notice 
of appeal to the reopening of prosecution will not be excluded from the 
three-year provision of 35 U.S.C. 154(b)(1)(B)(ii) as such time would 
occur prior to the date that jurisdiction is passed to the Board. See 
Sec.  1.703(b)(4).
    Comment 12: One comment sought clarification as to what would 
happen if jurisdiction ends without a decision by the Board or a 
Federal court; e.g., appellant files a request for continued 
examination under 37 CFR 1.114 after jurisdiction passes to the Board.
    Response: Section 1.703(b)(4) has been amended to address 
situations where the jurisdiction ends without a decision by the Board 
or a Federal court. Under the revised rule, the appeal review period 
will end on the date that jurisdiction ends under Sec.  41.35(b) or the 
date of the last decision by a Federal court in an appeal under 35 
U.S.C. 141 or a civil action under 35 U.S.C. 145, whichever is later. 
Accordingly, if appellant files a request for continued examination 
under 37 CFR 1.114 after jurisdiction passes to the Board, the period 
of ``B'' delay under 35 U.S.C. 154(b)(1)(B) would not include the 
period beginning on the date jurisdiction passed to the Board under 
Sec.  41.35(a) and ending on the filing date of the request for 
continued examination under 37 CFR 1.114; that is, the date 
jurisdiction of the Board ends.
    Comment 13: One comment sought clarification as to the point at 
which jurisdiction is remanded by the Board back to the examiner when 
the examiner

[[Page 49358]]

is affirmed, affirmed-in-part, or reversed.
    Response: Pursuant to Sec. Sec.  41.35(b)(2) and 41.54, 
jurisdiction of the Board ends when the Board enters a final decision 
(see Sec.  41.2) and judicial review is sought or the time for seeking 
judicial review has expired. Under 37 CFR 41.54, jurisdiction passes to 
the examiner, for further action by appellant or examiner, as the 
condition of the application or patent under ex parte reexamination may 
require additional action pursuant to the decision. Accordingly, the 
amount of patent term adjustment that may accrue under Sec.  1.703(e) 
and the period of time not considered ``B'' time will be fixed to the 
date that jurisdiction of the Board ends under Sec.  41.35(b) unless an 
appeal under 35 U.S.C. 141 or a civil action under 35. U.S.C. 145 is 
filed.
    Comment 14: One comment sought clarification as to the point at 
which an applicant may file an information disclosure statement after 
the Board reverses or remands the application to the examiner without 
an applicant delay resulting.
    Response: Current Sec.  1.704(c)(9) identifies when applicant delay 
occurs after a decision by the Board and is applicable to an 
information disclosure statement that is filed after a Board or Federal 
court decision. However, an applicant will not be deemed to have failed 
to engage in reasonable efforts under Sec.  1.704(c)(9) if the 
applicant can file an accompanying statement under Sec.  1.704(d).
    Comment 15: One comment suggested that the Office should adopt its 
original proposal as set forth in the notice of proposed rulemaking, 
Revision of Patent Term Extension and Adjustment Provisions Relating to 
Appellate Rule and Information Disclosure Statements, 76 FR 18990 
(April 6, 2011), that an applicant should receive additional patent 
term adjustment if the Office reopens prosecution and issues an Office 
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 
after a notice of appeal has been filed but before any decision by the 
Board. This comment suggested that the proposal set forth in the April 
2011 notice of proposed rulemaking is fairer in that only meritorious 
appeals will be rewarded, and that under the latest proposal, 
meritorious appeals will not be rewarded if prosecution is reopened 
after the filing of a request for continued examination. The comment 
further suggested that applicant can increase the patent term 
adjustment of the ``B'' delay by distorting the time between the notice 
of appeal and the date that jurisdiction passes to the Board by filing 
extensions of time under Sec.  1.136(a). In addition, the comment 
suggested that the Board conducts ``appellate review prior to the 
jurisdiction change under Sec.  41.35.''
    Response: The suggestions were not adopted. The Office has 
acknowledged that the impact of the rule would reduce the amount of 
patent term adjustment awarded for a successful appeal under 35 U.S.C. 
154(b)(1)(C)(iii). The Office, however, believes that any such impact 
may be offset by potentially increased patent term adjustment awarded 
for the Office failing to issue the patent within three years of the 
actual filing date under 35 U.S.C. 154(b)(1)(B). See Revision of Patent 
Term Adjustment Provisions relating to Appellate Review, 76 FR 81432 
(Dec. 28, 2011). The Office is aware that under certain scenarios an 
applicant may have received more overall patent term adjustment under 
one approach than the other. However, 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 
require the Office to interpret the same statutory term, ``appellate 
review by the Board,'' appearing in two closely related provisions, in 
two different ways. The Office is aware that prior to the passage of 
jurisdiction from the examiner to the Board, the Board reviews briefs 
for compliance with Sec.  41.37, but the Office notes that Revised 
Procedures for Appellate Review memorandum expressly states that the 
responsibility of the Board for determining whether appeal briefs 
comply with Sec.  41.37 is not considered a transfer of jurisdiction 
when an appeal brief is filed. See Revised Procedures for Appellate 
Brief Review (March 29, 2010) https://www.uspto.gov/patents/law/exam/bpai_revised_procedure_20100329.pdf. Instead, this review is only a 
transfer of the specific responsibility of notifying appellants under 
Sec.  41.37(d) of the reasons for non-compliance. id. As for an 
applicant's ability to distort the time from the notice of appeal to 
the date jurisdiction passes under Sec.  41.35, the Office has 
prevented applicant from increasing the ``B'' period by adding an 
additional applicant delay if applicant takes more than three months 
from the notice of appeal to the date of the submission of a compliant 
appeal brief under Sec.  1.704(c)(11). An applicant, for example, who 
obtains a five-month extension of time to file the appeal brief would 
have an applicant delay beginning on the day after the three-month date 
of the filing of the notice of appeal and ending on the date of the 
filing of the compliant appeal brief.

Rulemaking Considerations

A. Regulatory Flexibility Act

    The Deputy General Counsel for General Law of the United States 
Patent and Trademark Office certified to the Chief Counsel for Advocacy 
of the Small Business Administration at the proposed rule stage that 
changes in the proposed rule will not have a significant economic 
impact on a substantial number of small entities. See 5 U.S.C. 605(b). 
The Office received no comments on that certification. 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 
in this final rule will not have significant economic impact on a 
substantial number of small entities. See 5 U.S.C. 605(b).
    The changes to the rules of practice in this final rule: (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 Board under 37 
CFR 41.35; and (2) provide that the failure to file a proper appeal 
brief within three months from the date on which a notice of appeal to 
the Board 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 final rule does not 
add any additional requirements (including information collection 
requirements) or fees for patent applicants or patentees.
    The 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) for purposes of patent 
term adjustment calculations. They do not impose any additional burden 
on applicants. The change to 37 CFR 1.704(c) specifies that the failure 
to file a proper appeal brief within three months from the date on 
which a notice of appeal to the Board 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 for 
purposes of patent term adjustment calculations. This revision 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

[[Page 49359]]

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 three 
months from the date on which a notice of appeal to Board was filed.
    For the foregoing reasons, neither of the changes 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 rulemaking 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 rulemaking 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 rulemaking 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 rulemaking 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 required under 
Executive Order 13175 (Nov. 6, 2000).

F. Executive Order 13211 (Energy Effects)

    This rulemaking is not a significant energy action under Executive 
Order 13211 because this rulemaking 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 rulemaking 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 rulemaking 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 rulemaking 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 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 rulemaking 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 rulemaking 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 in this final rule: (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 Board under 37 CFR 41.35; and
    (2) provide that the failure to file a proper appeal brief within 
three months from the date on which a notice of appeal to the Board 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 final rule 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 the pertinent information collection 
package to OMB for its review and approval because the changes in this 
notice do not affect the information collection requirements associated 
with the information collections approved

[[Page 49360]]

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 recordkeeping 
requirements, Small businesses.

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

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2).

0
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 Patent Trial 
and Appeal Board under Sec.  41.35(a) of this chapter and ending on the 
date that jurisdiction by the Patent Trial and Appeal Board ends under 
Sec.  41.35(b) of this chapter or the date of the last decision by a 
Federal court in an appeal under 35 U.S.C. 141 or a civil action under 
35 U.S.C. 145, whichever is later.
* * * * *
    (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 Patent Trial and Appeal 
Board under Sec.  41.35(a) of this chapter and ending on the date of a 
final decision in favor of the applicant by the Patent Trial and Appeal 
Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil 
action under 35 U.S.C. 145.
* * * * *

0
3. Section 1.704 is amended by revising paragraphs (c)(10)(ii) and 
(c)(11) and adding paragraph (c)(12) to read as follows:


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

* * * * *
    (c) * * *
    (10) * * *
    (ii) Four months;
    (11) Failure to file an appeal brief in compliance with Sec.  41.37 
of this chapter within three months from the date on which a notice of 
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 
134 and Sec.  41.31 of this chapter, 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 three months from the 
date on which a notice of appeal to the Patent Trial and Appeal Board 
was filed under 35 U.S.C. 134 and Sec.  41.31 of this chapter, and 
ending on the date an appeal brief in compliance with Sec.  41.37 of 
this chapter or a request for continued examination in compliance with 
Sec.  1.114 was filed; and
    (12) Further prosecution via a continuing application, in which 
case the period of adjustment set forth in Sec.  1.703 shall not 
include any period that is prior to the actual filing date of the 
application that resulted in the patent.
* * * * *

    Dated: August 13, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-20238 Filed 8-15-12; 8:45 am]
BILLING CODE 3510-16-P