AIPLA Comments to USPTO on Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu

AIPLA agrees that that many of the Office’s proposed revisions to 37 CFR §§ 1.704(c)(1) through (c)(14) are consistent with the requirement set forth in the Supernus decision that a reduction in patent term adjustment correspond to “the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution.”

However, we have concerns with the Office’s proposed revision to Section 1.704(c)(6). Under the current rule, the period of reduction of patent term in this section is “the lesser of: (i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the date of mailing of the supplemental Office action or notice of allowance ; or (ii) Four months[.]” The Office’s proposed revision removes the four-month limit on the reduction, and calculates the amount of reduction from a date eight months from the filing or national entry date of the application, specifically: “the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. § 111(a) or the date of commencement of the national stage under 35 U.S.C. § 371(b) or (f) in an international application and ending on the date the preliminary amendment or other preliminary paper was filed.” We believe there are situations where an applicant would be harshly penalized under the revised rule for filing a preliminary paper outside of the eight-month window, even though the applicant’s actions did not constitute a failure to engage in reasonable efforts to conclude prosecution of the application.