What are the consequences of violating the duty of disclosure in patent term extension proceedings?
Violating the duty of disclosure in patent term extension proceedings can have serious consequences. The MPEP 2762 states: “A determination of eligibility for an extension or the issuance of a certificate will not be made if clear and convincing evidence of fraud or attempted fraud on the Office or a Secretary is determined to be…
Read MoreWhat are the consequences of not providing requested information for a patent term extension application?
Failing to provide requested information for a patent term extension application can have serious consequences. According to MPEP 2755: “The failure to provide a response within the time period provided may result in a final determination adverse to the granting of an extension of patent term unless the response period is extended.“ Furthermore, the MPEP…
Read MoreCan information submitted for patent term extension be kept confidential?
Generally, information submitted for patent term extension applications cannot be kept entirely confidential. MPEP 2760 states: “While one submitting such materials to the Office in relation to a pending application for patent term extension must generally assume that such materials will be made of record in the file and be made public, the Office is…
Read MoreWhen does confidential information in patent term extension applications become public?
The timing of when confidential information in patent term extension applications becomes public is addressed in MPEP 2760. The section states: “The information will not be made public as part of the patent file before a certificate of patent extension is issued. […] If such information was material to a determination of eligibility or any…
Read MoreWhat conditions must be met for a patent to qualify for term extension?
According to 35 U.S.C. 156(a)(1)-(5) and 37 CFR 1.720, the following conditions must be met: The patent has not expired before the application for extension is filed The patent has never been previously extended under 35 U.S.C. 156(e)(1) The application is submitted by the patent owner or its agent within 60 days of regulatory approval…
Read MoreWhat is meant by an application being in “condition for examination” for patent term adjustment purposes?
The concept of an application being in “condition for examination” is important for patent term adjustment calculations, particularly in relation to 37 CFR 1.704(c)(13). According to 37 CFR 1.704(f), an application filed under 35 U.S.C. 111(a) is in condition for examination when it includes: A specification, including at least one claim and an abstract Papers…
Read MoreWhat constitutes a “complete application” for patent term extension?
A “complete application” for patent term extension is defined in 37 CFR 1.741(a) and must meet the requirements set forth in 35 U.S.C. 156(d)(1). The MPEP states: “The Office will consider each of these statutory requirements to be satisfied in an application which provides sufficient information, directed to each requirement, to act on the application,…
Read MoreHow can I check the accuracy of the data used for Patent Term Adjustment calculations?
The USPTO provides a way for applicants to check the accuracy of the data used in Patent Term Adjustment (PTA) calculations throughout the prosecution process. According to MPEP 2733: “Information as to how the patent term adjustment calculation has been made will be available through Patent Application Information Retrieval (PAIR) at www.uspto.gov/learning-and-resources/portal-applications. Applicants may routinely…
Read MoreWhat is a Certificate of Extension of Patent Term?
A Certificate of Extension of Patent Term is an official document issued by the Director of the USPTO to extend the term of a patent that has been determined eligible for extension under 35 U.S.C. 156. According to MPEP 2759, “Such certificate shall be recorded in the official file of the patent and shall be…
Read MoreCan I request a Certificate of Correction to change the Patent Term Adjustment on my patent?
Generally, the USPTO does not grant requests for Certificates of Correction to revise the Patent Term Adjustment (PTA) indicated on a patent. According to MPEP 2733: “The Office will not grant a request for a certificate of correction under either 35 U.S.C. 254 or 255 to revise the patent term adjustment indicated in a patent,…
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