Patent and Trademark Office May 2019 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (USPTO) is modifying its patent term adjustment procedures in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Supernus Pharm., Inc. v. Iancu (Supernus). The USPTO makes the patent term adjustment determinations indicated in patents by a computer program that uses information recorded in its Patent Application Locating and Monitoring (PALM) system. The event from which the Federal Circuit measured the beginning of the patent term adjustment reduction period in Supernusa notice to the applicant from a foreign patent authorityis not an event that is recorded in the USPTO's PALM system. Thus, the USPTO will continue to make the patent term adjustment determinations indicated in patents under the existing regulations using information recorded in its PALM system. A patentee who believes that the period of patent term adjustment reduction exceeds the period of time during which the patentee failed to engage in reasonable efforts to conclude prosecution of the application may raise the issue in a timely request for reconsideration of the patent term adjustment, providing any relevant information that is not recorded in the USPTO's PALM system. The USPTO's decision on any timely filed patentee request for reconsideration will apply the Federal Circuit's decision in Supernus in view of the information presented by the patentee.