USPTO Adjusts Patent Term Adjustment Rules Under Court Precedent
Written June 18, 2020
The USPTO is revising 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 Federal Circuit in Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019). 85 Fed. Reg. 36335.
The Federal Circuit in Supernus held that a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C) must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.
The regulations pertaining to a reduction of patent term adjustment due to a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application are set forth in 37 CFR 1.704.
Several provisions in 37 CFR 1.704 specify a period of reduction corresponding to the consequences to the USPTO of the applicant’s failure to engage in reasonable efforts to conclude prosecution, rather than the period provided for in Supernus.