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S&H Practice TIP: 30-Day IDS Option─Benefit of Additional PTA Days

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The USPTO is required to extend or reduce the 20-year patent term from the application filing date when the delay was caused by the USPTO under the patent term adjustment (PTA) system created by the U.S. Congress. The PTA also accounts for the Applicant’s delay and reduces the PTA term (but not the original 20-year patent term) if any PTA term is granted.

37 C.F.R. § 1.704 governs what is considered the Applicant’s delay that would cause a reduction in the PTA. For example, this includes an applicant’s delay caused by submitting an IDS at certain timings, under 37 C.F. R. § 1.704(c)(6) or (c)(8)-(c)(10), which will be considered to cause a delay in the prosecution of the patent application, even when the IDS complies with the 3 month period to submit an IDS under 37 C.F.R. § 1.97. For example, the reduction of the PTA under 37 C.F. R. § 1.704(c)(6), (c)(9), or (c)(10), if any, may be up to 40 days.

However, if the IDS is to disclose a reference first cited in a foreign action, the patentee may obtain a benefit of avoiding the PTA reduction in these scenarios by utilizing the 30-day IDS rule under 37 C.F. R. § 1.704(d).

37 C.F. R. § 1.704(c)(6) and (c)(8)-(c)(10) indicate that submission of an IDS will count as the Applicant’s delay if filed: (1) one month before the mailing of first OA or NOA (§ 1.704(c)(6)); (2) after a response was filed and prior to the next action (§ 1.704(c)(8)); (3) after PTAB’s decision on an appeal (§ 1.704(c)(9)); or (4) after the mailing of the NOA (§ 1.704(c)(10)).

37 C.F. R. § 1.704(d) states that an IDS will not be considered a failure to engage in reasonable efforts to conclude prosecution if it is accompanied by a statement that each item of information contained in the IDS was first cited in any communication from a foreign patent office in a counterpart application and that it was not received more than 30 days prior to the filing of the IDS.

To apply for the benefits, patentees must (1) expressly request a waiver under 37 C.F. R. § 1.704(d), and (2) file an IDS containing the first foreign-cited reference or the first foreign action within 30 days of the foreign action date.

This rule is not to be confused with 37 C.F.R. § 1.97(e)(1) certification, which states that information in an IDS were cited in a communication from a foreign patent office not more than three months prior to the filing of the IDS.

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