What happens if a patent term extension application is incomplete?
If a patent term extension application does not meet all the formal requirements of 37 CFR 1.740(a), the applicant will be notified of the informalities. The applicant then has two options: Seek to have the holding reviewed under 37 CFR 1.740(c) Correct the informality It’s important to note that “if the application satisfies the requirements…
Read MoreHow does filing an Information Disclosure Statement (IDS) affect patent term adjustment?
Filing an Information Disclosure Statement (IDS) can potentially reduce patent term adjustment under certain circumstances. However, the reduction can be avoided if the IDS is accompanied by a statement under 37 CFR 1.704(d). The MPEP states: “37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97…
Read MoreHow can I withdraw my application for patent term extension?
To withdraw an application for patent term extension, you must follow the procedure outlined in 37 CFR 1.770. Specifically: File a written declaration of withdrawal in duplicate with the USPTO. Ensure the declaration is signed by the patent owner of record or their agent. Submit the withdrawal before a determination is made under 37 CFR…
Read MoreHow long can an interim extension last?
According to MPEP 2755.01, interim extensions can be granted for periods of up to one year each. The MPEP states: “The length of any interim extension is discretionary with the Director so long as it is for one year or less. Its length should be set to provide time for completion of any outstanding requirements.“…
Read MoreHow is the A-delay calculated for patent term adjustment?
The A-delay is calculated based on the USPTO’s failure to meet certain deadlines during patent prosecution. According to MPEP 2731, there are several components to the A-delay: Failure to issue a first Office action within 14 months of filing Failure to respond to a reply within 4 months Failure to act on an application within…
Read MoreHow does the Hatch-Waxman Act affect patent infringement related to regulatory approval?
The Hatch-Waxman Act, codified in part as 35 U.S.C. 271(e), provides a safe harbor for certain activities that would otherwise be considered patent infringement. According to the MPEP: “Congress legislatively overruled Roche Products v. Bolar Pharmaceuticals, 733 F.2d 858, 221 USPQ 937 (Fed. Cir. 1984) as to products covered by 35 U.S.C. 271(e) and provided…
Read MoreWhat happens if a third party submits information regarding a patent term extension proceeding?
According to MPEP 2763, any submissions made by third parties regarding patent term extension proceedings will not be considered by the USPTO. The section clearly states: “Submissions by third parties not requested by the Office will be returned, or otherwise disposed of, without consideration.“ This policy is enforced to maintain the ex parte nature of…
Read MoreWhat are the grounds for patent term adjustment?
The grounds for patent term adjustment are specified in 37 CFR 1.702 and include: Delays due to the USPTO failing to take certain actions within specified timeframes Delays due to the USPTO failing to issue a patent within three years of the actual filing date Delays due to interferences, secrecy orders, and appeals As stated…
Read MoreHow does foreign priority affect patent term?
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent. This means that the 20-year term is calculated from the U.S. filing date, not the…
Read MoreWhat happens if the USPTO receives a FOIA request for confidential information in a patent term extension application?
If the United States Patent and Trademark Office (USPTO) receives a Freedom of Information Act (FOIA) request for confidential information in a patent term extension application, specific procedures are followed. According to MPEP 2760: “Should the Office receive a Freedom of Information Act (FOIA) request for the material, the applicant will be provided notice and…
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