US Patent Term Adjustment Final Rules

On January 9, 2015, the USPTO published its final rules implementing changes to patent term adjustment (PTA), in view of the US Federal Circuit decision in Novartis v Lee. The final rules particularly impact those patents in which a request for continued examination (RCE) was filed during patent prosecution.

The most significant aspects, which we wrote about here, include:

• Entitlement to PTA credit that includes the time between notice of allowance and the issue date of the patent.
• A new type of deduction from PTA for applicant delay in instances when an RCE is filed after a notice of allowance.

Consequently, patents in which an RCE was filed during prosecution may be entitled to a longer term as the period of time between allowance and issuance may be considered in calculation of a PTA award, while the filing of an RCE after a notice of allowance can result in PTA loss between the date of the notice of allowance and the date of the RCE filing.

Accordingly, patent applicants may wish to evaluate the impact that the new rules may have in instances where an RCE was filed during patent prosecution.