[Federal Register Volume 76, Number 66 (Wednesday, April 6, 2011)]
[Proposed Rules]
[Pages 18990-18995]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-8275]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2011-0014]
RIN 0651-AC56


Revision of Patent Term Extension and Adjustment Provisions 
Relating to Appellate Review and Information Disclosure Statements

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to revise the patent term adjustment and extension provisions 
of the rules of practice in patent cases. The patent term adjustment 
provisions of the American Inventors Protection Act of 1999 (AIPA) and 
the patent term extension provisions of the Uruguay Round Agreements 
Act (URAA) each provide for patent term extension or adjustment if 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 pursuant to or 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 in most 
circumstances an examiner reopening prosecution of the application 
after a notice of appeal has been filed will be considered a decision 
in the review reversing an adverse determination of patentability for 
purposes of patent term adjustment or extension purposes. Therefore, in 
such situations, patentees would be entitled to patent term extension 
or adjustment. In addition, the AIPA provides for a reduction of any 
patent term adjustment if the applicant failed to engage in reasonable 
efforts to conclude prosecution of the application. The Office is also 
proposing to change the rules of practice pertaining to the reduction 
of patent term adjustment for applicant delays to exclude information 
disclosure statements resulting from the citation of information by a 
foreign patent office in a counterpart

[[Page 18991]]

application that are promptly filed with the Office. For example, under 
the proposed rule, there would not be a reduction of patent term 
adjustment in the following situations: When applicant promptly submits 
a reference in an information disclosure statement after the mailing of 
a notice of allowance if the reference was cited by the Office in 
another application, or when applicant promptly submits a copy of an 
Office communication (e.g., an Office action) in an information 
disclosure statement after the mailing of a notice of allowance if the 
Office communication was issued by the Office in another application or 
by a foreign patent office in a counterpart foreign application.

DATES: Written comments must be received on or before May 6, 2011. No 
public hearing will be held.

ADDRESSES: Comments concerning this proposed rule should be sent by 
electronic mail message over the Internet addressed to 
<a href="/cdn-cgi/l/email-protection#bffefc8a8991dcd0d2d2dad1cbccffcacccfcbd091d8d0c9"><span class="__cf_email__" data-cfemail="01404234372f626e6c6c646f757241747271756e2f666e77">[email protected]</span></a>. 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: Section 532(a) of the URAA (Pub. L. 103-465, 
108 Stat. 4809 (1994)) 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). 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 AIPA (Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-
591 (1999)) further amended 35 U.S.C. 154(b) to include additional 
bases for patent term extension (characterized as ``patent term 
adjustment'' in the AIPA). Original utility and plant patents issuing 
from applications filed on or after May 29, 2000, may be eligible for 
patent term adjustment if issuance of the patent is delayed due to one 
or more of the enumerated administrative delays listed in 35 U.S.C. 
154(b)(1). 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 (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 (35 U.S.C. 154(b)(1)(B)); and (3) for delays 
due to interference, secrecy order, or successful appellate review (35 
U.S.C. 154(b)(1)(C)). See 35 U.S.C. 154(b)(1). The AIPA, however, 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 Office implemented the patent term adjustment provisions of 35 
U.S.C. 154(b) as amended by the AIPA, including setting forth the 
circumstances that constitute a failure of an applicant to engage in 
reasonable efforts to conclude processing or examination of an 
application, 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.
    Revision of Patent Term Extension and Patent Term Adjustment 
Provisions Relating to Decisions During Appellate Review: Under the 
patent term adjustment final rule published in 2000, the Office 
initially stated that for a decision by the BPAI to be ``a decision in 
the review reversing an adverse determination of patentability'' within 
the meaning of 35 U.S.C 154(b)(1)(C)(iii), the decision must sustain or 
reverse the rejection(s) of claims(s) on appeal. See Changes to 
Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 
at 56368. The Office further stated that a remand or other 
administrative order by the BPAI even if by a merits panel would not be 
considered ``a decision in the review reversing an adverse 
determination of patentability'' in the 35 U.S.C. 154(b)(1)(C)(iii). 
See id. at 56369.
    The Office subsequently determined that there were a number of BPAI 
panel remands that conveyed the weakness in the examiner's adverse 
patentability determination in a manner tantamount to a decision 
reversing the adverse patentability determination. See Revision of 
Patent Term Adjustment and Extensions, 69 FR 21704 (April 22, 2004) 
(2004 patent term adjustment/extension final rule). Generally, the 
remands resulted in the examiner allowing the application (either with 
or without further action by applicant) without returning the 
application to the

[[Page 18992]]

BPAI for a decision on the appeal. The 2004 patent term adjustment/
extension final rule addressed the situation in which an examiner 
responds to a remand by a BPAI panel by allowing the application 
(either with or without further action by applicant), rather than 
returning the application to the BPAI for a decision on the appeal. See 
id. at 21705. In that situation, the BPAI panel remand was considered 
``a decision in the review reversing an adverse determination of 
patentability'' for patent term extension and patent term adjustment 
purposes. See id.; see also 37 CFR 1.701(a)(3) and 1.702(e). This 
change in the 2004 patent term adjustment/extension final rule, 
however, did not apply if, after the BPAI panel remand, appellant filed 
a request for continued examination under 35 U.S.C. 132(b) (37 CFR 
1.114) that was not first preceded by the mailing, after such remand, 
of an action under 35 U.S.C. 132 or a notice of allowance under 35 
U.S.C. 151. See id.; see also 37 CFR 1.701(a)(3) and 1.702(e).
    In 2005, the Office instituted a pilot program to provide an 
appellant the opportunity to request that a panel of examiners formally 
review the legal and factual bases of the rejections in his or her 
application prior to the filing of an appeal brief. See New Pre-Appeal 
Brief Conference Pilot Program, 1260 Off. Gaz. Pat. Office 67 (July 12, 
2005). In the pilot program, the Office indicated that a decision by a 
pre-appeal brief conference panel to withdraw any or all of the claims 
on appeal is not a decision by the panel of the BPAI, and as such, 
would not result in any patent term adjustment or extension under 35 
U.S.C. 154(b). See id.
    This pilot program has resulted in a number of situations in which 
prosecution is reopened. The Office has now concluded that it may and, 
in most situations, should treat a decision in a pre-appeal brief 
review reopening prosecution and issuing an Office action or notice of 
allowance as a ``decision in the review reversing an adverse 
determination of patentability'' under 35 U.S.C. 154(b)(1)(C)(iii). 
Prior to 2005, the vast majority of applications in which a notice of 
appeal and appeal brief were filed were forwarded to the BPAI for a 
decision on the appeal. That is, prior to 2005, the only notable 
``decision in the review'' of an application on appeal was a decision 
by the BPAI. Under current Office practice, however, the application in 
which a notice of appeal has been filed may be subject to a pre-appeal 
brief review and will be subject to a post-appeal brief review before 
the application will be forwarded to the BPAI for a decision by the 
BPAI. Thus, under current Office practice, the process for seeking 
appellate review by the BPAI involves at least one decision in the 
review before the application is forwarded to the BPAI, and a decision 
in these pre-BPAI reviews may result in the reopening of prosecution 
and issuance of an Office action or notice of allowance. Since in many 
such situations the reopening of the application after 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, the Office now considers it appropriate to 
treat such situations as a ``decision in the review reversing an 
adverse determination of patentability'' under 35 U.S.C. 
154(b)(1)(C)(iii). Consequently, the Office has determined that it is 
prudent as a matter of policy to allow for a correspondent positive 
patent term adjustment when an examiner reverses his or her prior 
rejection under these circumstances.
    Accordingly, the Office is proposing to revise the patent term 
adjustment and extension provisions to provide, with certain 
exceptions, that an examiner reopening prosecution will be considered a 
``decision in the review reversing an adverse determination of 
patentability,'' and therefore result in the possibility of patent term 
adjustment under 35 U.S.C. 154(b). The Office notes that not all 
reopening of prosecution after the filing of a notice of appeal will be 
considered a ``decision in the review reversing an adverse 
determination of patentability.'' For example, the reopening of 
prosecution after a notice of appeal resulting from an applicant filing 
a request for continued examination (RCE) (proper or improper) will not 
be considered a ``decision in the review reversing an adverse 
determination of patentability'' and will not result in patent term 
adjustment under 35 U.S.C. 154(b). Furthermore, any reopening of 
prosecution or issuance of a notice of allowance under 35 U.S.C. 151 
resulting from an applicant filing an amendment pursuant to 37 CFR 
41.33 canceling all claims on appeal will not be considered a 
``decision in the review reversing an adverse determination of 
patentability'' and will not result in patent term adjustment under 35 
U.S.C. 154(b). Moreover, any reopening of prosecution or issuance of a 
notice of allowance under 35 U.S.C. 151 resulting from the applicant 
filing a request to dismiss or withdraw the appeal will not be 
considered a ``decision in the review reversing an adverse 
determination of patentability'' and will not result in patent term 
adjustment under 35 U.S.C. 154(b).
    If the patent issues after an examiner reopens prosecution after 
the filing of a notice of appeal, and the reopening of prosecution is 
considered ``a decision in the review reversing an adverse 
determination of patentability,'' then the reopening of prosecution is 
deemed by the Office to be the ``final decision in favor of the 
applicant'' for purposes of a patent term extension or adjustment 
calculation under 37 CFR 1.701(c)(3) or 1.703(e) (as applicable). The 
period of extension or adjustment calculated under 37 CFR 1.701(c)(3) 
or 1.703(e) (as applicable) would equal the number of days in the 
period beginning on the date on which a notice of appeal to the BPAI 
was filed under 35 U.S.C. 134 and 37 CFR 41.31 and ending on the date 
of mailing of the Office action under 35 U.S.C.132 or a notice of 
allowance under 35 U.S.C. 151.
    Revisions of Patent Term Extension and Patent Term Adjustment 
Provisions Relating to Information Disclosure Statements: Section 
1.704(c) provides that the submission of an information disclosure 
statement either that is after a notice of allowance or that requires a 
supplemental Office action results in a reduction of any patent term 
adjustment under 37 CFR 1.703. See 37 CFR 1.704(c)(6), 1.704(c)(8), 
1.704(c)(9), and (c)(10). Section 1.704(d) provides that an information 
disclosure statement will not result in a patent term adjustment 
reduction under 37 CFR 1.704(c)(6), 1.704(c)(8), 1.704(c)(9), or 
(c)(10) if it is accompanied by a certification (statement) that each 
item of information contained in the information disclosure statement 
was first cited in a communication from a foreign patent office in a 
counterpart application and that this communication was not received by 
any individual designated in 37 CFR 1.56(c) more than thirty days prior 
to the filing of the information disclosure statement. 37 CFR 1.704(d) 
permits applicants to submit information first cited in a communication 
from a foreign patent office in a counterpart application to the Office 
without a reduction in patent term adjustment if an information 
disclosure statement is promptly (within thirty days of receipt of the 
communication) submitted to the Office.
    Recent decisions by the U.S. Court of Appeals for the Federal 
Circuit (Federal Circuit) underscore the importance of making 
information cited and Office actions issued in related copending 
foreign and domestic applications of record. See Dayco Products, Inc. 
v. Total Containment, Inc., 329 F.3d 1358 (Fed.

[[Page 18993]]

Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Medical, Inc., 
487 F.3d 897 (Fed. Cir. 2007); see also Larson Mfg. Co. v. Aluminart 
Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009) (relating to disclosure 
in a U.S. reexamination proceeding of U.S. Office actions that were 
issued in a continuation application of the patent under 
reexamination). The Office is proposing to revise 37 CFR 1.704(d) to 
also embrace information first cited in a communication from the 
Office, as well as the communication (e.g., Office action) in a 
counterpart foreign or international application or from the Office 
itself.
    Obviously, meeting the conditions set forth in 37 CFR 1.704(d) does 
not substitute for compliance with any relevant requirement of 37 CFR 
1.97 or 1.98.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.701: Section 1.701(a)(3) is proposed to be amended to 
take into account the situation in which the Office reopens prosecution 
after a timely notice of appeal has been filed but before any decision 
by the BPAI and issues an Office action under 35 U.S.C. 132 (i.e., a 
new non-final or final Office action) or notice of allowance under 35 
U.S.C. 151. The reopening of prosecution in this situation will in most 
circumstances also be considered a decision in the review reversing an 
adverse determination of patentability as that phrase is used in 35 
U.S.C. 154(b)(2) as amended by the URAA, and a final decision in favor 
of the applicant under Sec.  1.701(c)(3). An examiner's answer 
containing a new ground of rejection is not an Office action under 35 
U.S.C. 132, and is not the Office reopening prosecution. Section 
1.701(a)(3) is also proposed to be amended by adding a sentence to 
provide that a reopening of prosecution after a notice of appeal has 
been filed will not be considered a decision in the review reversing an 
adverse determination of patentability as provided in Sec.  1.701(a)(3) 
if appellant files a request to withdraw the appeal, an amendment 
pursuant to Sec.  41.33 canceling all of the claims on appeal, or a 
request for continued examination under 35 U.S.C. 132(b).
    Section 1.702: Section 1.702(e) is proposed to be amended to take 
into account the situation in which the Office reopens prosecution 
after a timely notice of appeal has been filed but before any decision 
by the BPAI and issues an Office action under 35 U.S.C. 132 (i.e., a 
new non-final or final Office action) or notice of allowance under 35 
U.S.C. 151. The reopening of prosecution in this situation will in most 
circumstances also be considered a decision by the BPAI as that phrase 
is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review 
reversing an adverse determination of patentability as that phrase is 
used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of 
the applicant under Sec.  1.703(e). An examiner's answer containing a 
new ground of rejection is not an Office action under 35 U.S.C. 132, 
and is not the Office reopening prosecution. Section 1.702(e) is 
further amended by adding a sentence to provide that a reopening of 
prosecution after a notice of appeal has been filed will not be 
considered a decision in the review reversing an adverse determination 
of patentability as provided in Sec.  1.702(e) if appellant files a 
request to withdraw the appeal, an amendment pursuant to Sec.  41.33 
canceling all of the claims on appeal, or a request for continued 
examination under 35 U.S.C. 132(b).
    Section 1.704: Section 1.704(d) is amended to change ``any 
communication from a foreign patent office in a counterpart 
application'' to ``any communication from a patent office in a 
counterpart foreign or international application or from the Office'' 
and add `` or is a communication that was issued by a patent office in 
a counterpart foreign or international application or by the Office.'' 
This change revises Sec.  1.704(d) to also embrace information first 
cited in a communication from the Office, as well as the communication 
(e.g., Office action) in a counterpart foreign or international 
application or from the Office itself. For example, under the proposed 
rule, there would not be a reduction of patent term adjustment in the 
following situations: (1) When applicant promptly submits a reference 
in an information disclosure statement after the mailing of a notice of 
allowance if the reference was cited by the Office in another 
application, or (2) when applicant promptly submits a copy of an Office 
communication (e.g., an Office action) in an information disclosure 
statement after the mailing of a notice of allowance if the Office 
communication was issued by the Office in another application or by a 
foreign patent office in a counterpart foreign application.

Rulemaking 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 
proposed rule will not have a significant economic impact on a 
substantial number of small entities. See 5 U.S.C. 605(b).
    This rule making involves: (1) Indicating that in most 
circumstances an examiner reopening prosecution of the application 
after a notice of appeal has been filed will be considered a ``decision 
in the review reversing an adverse determination of patentability'' for 
patent term adjustment or extension purposes; and (2) indicating that 
the exception to the patent term adjustment reduction for filing an 
information disclosure statement after a notice of allowance or that 
requires a supplemental Office action for information disclosure 
statements for information cited by a foreign patent office in a 
counterpart application that are promptly filed with the Office is 
expanded to also embrace information first cited by the Office in 
another application. This proposed rule does not propose to add any 
additional requirements (including information collection requirements) 
or fees for patent applicants or patentees. Therefore, the changes 
proposed in this proposed rule will not 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: (1) Used the best available techniques to 
quantify costs and benefits, and has considered values such as equity, 
fairness and distributive impacts; (2) provided the public with a 
meaningful opportunity to participate in the regulatory process, 
including soliciting the views of those likely affected prior to 
issuing a notice of proposed rule making, and provided on-line access 
to the rule making docket; (3) attempted to promote coordination, 
simplification and harmonization across government agencies and 
identified goals designed to promote innovation; (4) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (5) ensured the objectivity of scientific 
and technological information and processes, to the extent applicable.
    D. Executive Order 13132 (Federalism): This rule making does not 
contain policies with federalism

[[Page 18994]]

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 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 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 proposed 
rule 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 proposed rule 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 proposed rule 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. As discussed previously, this rulemaking involves: (1) Indicating 
that in most circumstances an examiner reopening prosecution of the 
application after a notice of appeal has been filed will be considered 
a ``decision in the review reversing an adverse determination of 
patentability'' for patent term adjustment or extension purposes; and 
(2) indicating that the exception to the patent term adjustment 
reduction for filing an information disclosure statement after a notice 
of allowance or that requires a supplemental Office action for 
information disclosure statements for information cited by a foreign 
patent office in a counterpart application that are promptly filed with 
the Office is expanded to also embrace information first cited by the 
Office in another application. This proposed 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 information collection packages to OMB 
for its review and approval because the changes proposed in this 
proposed rule do not affect the information collection requirements 
associated with the information collections under OMB control number 
0651-0020.
    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 1.701 is amended by revising paragraph (a)(3) to read as 
follows:


Sec.  1.701  Extension of patent term due to examination delay under 
the Uruguay Round Agreements Act (original applications, other than 
designs, filed on or after June 8, 1995, and before May 29, 2000).

    (a) * * *
    (3) Appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant to a decision in the review reversing an 
adverse determination of patentability and if the patent is not subject 
to a terminal disclaimer due to the issuance of another patent claiming 
subject matter that is not patentably distinct from that under 
appellate review. If an application is remanded by a panel of the Board 
of Patent Appeals and Interferences and the remand is the last action 
by a panel of the Board of Patent Appeals and Interferences prior to 
the mailing of a notice of allowance under 35 U.S.C. 151 in the 
application or if the Office reopens prosecution after a notice of 
appeal has been filed but before any decision by the Board of Patent 
Appeals and Interferences and issues an Office action under 35 U.S.C. 
132 or notice of allowance under 35 U.S.C. 151, the remand or issuance 
of an Office action under 35 U.S.C. 132 or notice of allowance under 35 
U.S.C. 151 shall be

[[Page 18995]]

considered a decision in the review reversing an adverse determination 
of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as 
amended by section 532(a) of the Uruguay Round Agreements Act, Public 
Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final decision in 
favor of the applicant under paragraph (c)(3) of this section. A remand 
by a panel of the Board of Patent Appeals and Interferences shall not 
be considered a decision in the review reversing an adverse 
determination of patentability as provided in this paragraph if there 
is filed a request for continued examination under 35 U.S.C. 132(b) 
that was not first preceded by the mailing, after such remand, of at 
least one of an action under 35 U.S.C. 132 or a notice of allowance 
under 35 U.S.C. 151. A reopening of prosecution after a notice of 
appeal has been filed shall not be considered a decision in the review 
reversing an adverse determination as provided in this paragraph if 
appellant files a request to withdraw the appeal, an amendment pursuant 
to Sec.  41.33 of this chapter canceling all of the claims on appeal, 
or a request for continued examination under 35 U.S.C. 132(b).
* * * * *
    3. Section 1.702 is proposed to be amended by revising paragraph 
(e) to read as follows:


Sec.  1.702  Grounds for adjustment of patent term due to examination 
delay under the Patent Term Guarantee Act of 1999 (original 
applications, other than designs, filed on or after May 29, 2000).

* * * * *
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an 
original patent shall be adjusted if the issuance of the patent was 
delayed due to review by the Board of Patent Appeals and Interferences 
under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, 
if the patent was issued under a decision in the review reversing an 
adverse determination of patentability. If an application is remanded 
by a panel of the Board of Patent Appeals and Interferences and the 
remand is the last action by a panel of the Board of Patent Appeals and 
Interferences prior to the mailing of a notice of allowance under 35 
U.S.C. 151 in the application or if the Office reopens prosecution 
after a notice of appeal has been filed but before any decision by the 
Board of Patent Appeals and Interferences and issues an Office action 
under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151, the 
remand or issuance of an Office action under 35 U.S.C. 132 or notice of 
allowance under 35 U.S.C. 151 shall be considered a decision in the 
review reversing an adverse determination of patentability as that 
phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in 
favor of the applicant under Sec.  1.703(e). A remand by a panel of the 
Board of Patent Appeals and Interferences shall not be considered a 
decision in the review reversing an adverse determination of 
patentability as provided in this paragraph if there is filed a request 
for continued examination under 35 U.S.C. 132(b) that was not first 
preceded by the mailing, after such remand, of at least one of an 
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 
151. A reopening of prosecution after a notice of appeal has been filed 
shall not be considered a decision in the review reversing an adverse 
determination as provided in this paragraph if appellant files a 
request to withdraw the appeal, an amendment pursuant to Sec.  41.33 of 
this title canceling all of the claims on appeal, or a request for 
continued examination under 35 U.S.C. 132(b).
* * * * *
    4. Section 1.704 is amended by revising paragraph (d) to read as 
follows:


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

* * * * *
    (d)(1) A paper containing only an information disclosure statement 
in compliance with Sec. Sec.  1.97 and 1.98 will not be considered a 
failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraphs (c)(6), 
(c)(8), (c)(9), or (c)(10) of this section if it is accompanied by a 
statement that each item of information contained in the information 
disclosure statement:
    (i) Was first cited in any communication from a patent office in a 
counterpart foreign or international application or from the Office and 
this communication was not received by any individual designated in 
Sec.  1.56(c) more than thirty days prior to the filing of the 
information disclosure statement; or
    (ii) Is a communication that was issued by a patent office in a 
counterpart foreign or international application or by the Office and 
this communication was not received by any individual designated in 
Sec.  1.56(c) more than thirty days prior to the filing of the 
information disclosure statement.
    (2) The thirty-day period set forth in paragraph (d)(1) of this 
section is not extendable.
* * * * *

Teresa Stanek Rea,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2011-8275 Filed 4-5-11; 8:45 am]
BILLING CODE 3510-16-P


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