Unlock regulatory insights with Watson. Learn More

Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee

Abstract: The United States Patent and Trademark Office (Office) is proposing changes to the rules of practice pertaining to the patent term adjustment provisions of 35 U.S.C. 154(b) in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014). The Federal Circuit confirmed in Novartis that any time consumed by continued examination under 35 U.S.C. 132(b) is subtracted in determining the extent to which the period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years, regardless of when the continued examination under 35 U.S.C. 132(b) was initiated. The Federal Circuit, however, decided that the time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office is proposing changes to the rules of practice to provide that the time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office is also proposing changes to the rules of practice to provide that the submission of a request for continued examination under 35 U.S.C. 132(b) after a notice of allowance under 35 U.S.C. 151 has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.
RIN: 0651-AC96
Type: Rule Making
VIEW ALL (2)Primary Documents