[Federal Register Volume 76, Number 249 (Wednesday, December 28, 2011)]
[Proposed Rules]
[Pages 81432-81437]
From the Federal Register Online via the Government Publishing 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 [email protected].
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 (http://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 (http://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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