By Sydney Kokjohn —

We recently received a
dismissal of a Request for Reconsideration of Patent Term Adjustment
Determination under 37 C.F.R. § 1.705(b).  The Request was filed solely on the basis that the Patent Office had
taken more than three years to issue the patent.  The patent application was filed on December 7, 2005.  Thus,
a patent should have issued by December 7, 2008.  A Request for Continued Examination (RCE) was filed on February
16, 2009, thus cutting off from that date any additional patent term for
failure to issue the patent within three years under 37 C.F.R. § 1.702(b).

The Patent Office notice stated:

Knowledge of the actual
date the patent issues is required to calculate the amount, if any, of
additional patent term patentee is entitled to for Office failure to issue the
patent within 3 years.  See § 1.702(b).  (This is true even where a request for
continued examination (RCE) was filed).  The computer will not undertake the § 1.702(b)
calculation until the actual date of issuance of the patent has been
determined.  Likewise, the computer will not calculate any further Office delay
under § 1.702(a)(4) or applicant delay under § 1.704(c)(10) until the actual
date of issuance of the patent has been determined.  As such, the Office can not
make a determination on the correctness of the patent term adjustment until the
patent has issued.

Requesting
reconsideration of the patent term adjustment to be indicated on the patent
under 37 CFR 1.705(b) based on the initial determination of patent term
adjustment and a projected issuance date of the patent (or even the filing date
of the request for continued examination) is premature.  Accordingly, it is
appropriate to dismiss as premature such a request.

Rather than file an
application for patent term adjustment under 37 CFR 1.705(b) contesting the 37
CFR 1.702(b) calculation at the time of the mailing of the notice of allowance,
applicant is advised that they may wait until the time of the issuance of the
patent and file a request for reconsideration of the patent term adjustment
pursuant to 37 CFR 1.705(d).  As the USPTO does not calculate the amount of time
earned pursuant to 37 CFR 1702(b) until the time of the issuance of the patent,
the Office will consider any request for reconsideration of the patent term
adjustment due to an error in the calculation of 37 CFR 1.702(b) to be timely
if the request for reconsideration is filed within two months of the issuance
of the patent.  However, as to all other bases for contesting the initial
determination of patent term adjustment received with the notice of allowance,
applicant must timely file an application for patent term adjustment prior to
the payment of the issue fee.

Even though filing an RCE
effectively cuts off any additional patent term for failure to issue a patent
within three years, the Patent Office's computers will not calculate delay
under 37 C.F.R. § 1.702(b) (or 1.702(a)(4) or 1.704(c)(10)) until after the
actual date of issuance has been determined.

The Office of Patent
Legal Administration indicated that it plans to issue a statement regarding
this matter.  In the meantime,
a simple reading of the rules does not instill much confidence that a Request for
Reconsideration of Patent Term Adjustment Determination when an RCE has been
filed will not be considered untimely under 37 C.F.R. 1.705(d) if the Request
is filed after the patent issues.  Section 1.705(d) states:

If there is a revision to
the patent term adjustment indicated in the notice of allowance, the patent
will indicate the revised patent term adjustment.  If the patent indicates or
should have indicated a revised patent term adjustment, any request for
reconsideration of the patent term adjustment indicated in the patent must be
filed within two months of the date the patent issued and must comply with the
requirements of paragraphs (b)(1) and (b)(2) of this section.  Any request for reconsideration under this
section that raises issues that were raised, or could have been raised, in an
application for patent term adjustment under paragraph (b) of this section
shall be dismissed as untimely as to those issues.

Section 1.705(b) requires
that the request be filed "no later than the payment of the issue fee."  As filing an RCE cuts off additional
patent term, it seems that any request for additional patent term in the case
of an RCE could be raised under
1.705(b).  Nevertheless, this
dismissal indicates that the Patent Office's computers do not calculate any
delay for failing to issue a patent within three years under 1.702(b) until the
date of issuance of the patent has been determined.

In addition to a
dismissal of the request as premature, note that another possible disadvantage
of filing a request for additional patent term for failure to issue a patent
within three years prior to the issuance of the patent is that the patent may
issue later due to the time it takes the Patent Office to consider the
request.  However, 37 C.F.R. §
1.704(e) indicates that filing a request for patent term adjustment under
1.705(b) "will not be considered a failure to engage in reasonable efforts
to conclude prosecution."