1. Patent Prosecution Luncheon
February 2014

2. Defective Priority Claim Means No Priority Claim
• Each intermediate application in the chain of priority
must refer to the prior applications
– Ex: If Application C claims priority through Application B
to Application A, not only must Application C say so, but
Application B must have said that it claims priority to
Application A.
– “this application” means the present application
 Not “application B” when recited in application C
 Not “what a reasonable person would understand it to mean in
context”
– Medtronic CoreValve LLC vs. Edwards Lifesciences
Corp. (CAFC Jan 22, 2014)

3. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
•>14 months from 1st Action
•>4 months for PTO to respond to formal
transmittal
•>4 months for PTO to take action on BPAI or
Fed. Ct. action*
•>4 months for issuance after payment of
issue fee

4. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
•>3 years from filing before issuance
•Subtract continued exam (RCE)
•Subtract interference actions
•Subtract secrecy orders
•Subtract Appeal
•Subtract applicant requested delay

5. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
+ Cterm
•Add days for interference
•Add days for secrecy order
•Add days for successful appeal

6. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
+ Cterm
- ABoverlap

7. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
+ Cterm
- ABoverlap
- ACoverlap

8. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
+ Cterm
- ABoverlap
- ACoverlap
- Applicantdelay
•>3 months to respond to OAs
•Requests for suspension or
deferring issuance
•Reviving an abandoned
application
•Late payment of issue fee
•Procedural “conversion” of
provisional to non-provisional

9. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
+ Cterm
- ABoverlap
- ACoverlap
- Applicantdelay
PTA

10. PTA Calculation
• Reminder:
–
–
–
–
Only applies to applications filed on or after June 8, 1995
Does not extend past a terminal disclaimer
Only applies to Plant and Utility patents (not design)
Different analysis for applications filed on or after May 29, 2000
Aterm
+ B term
+ Cterm
- ABoverlap
- ACoverlap
- Applicantdelay
PTA
Novartis thought this only applied if
the RCE was filed within three
years of the filing date.
Time consumed by an RCE is
subtracted regardless of when the
RCE is filed!
…But, you can start counting B
period again after notice of
allowance.
Novartis AG v. Lee (CAFC, Jan. 15,
2014)

11. RCE Impact on PTA
• The exclusion from PTA in 35 U.S.C. § 154(b)(1)(B)(ii)
excludes from PTA any time consumed by a Request for
Continued Examination (RCE), even if that RCE is filed more
than 3 years after the “actual filing date” of the patent
application.
– “ [PTA] time should be calculated by determining the length of
the time between the application [filing date] and patent
issuance, and then subtracting any [RCE time period] and
determining the extent to which result exceeds three years.”
– “Such a reading ensures that applicants recover for any
‘delay[s] due to the failure of the [PTO],’ without allowing the
applicant to recover for ‘any time consumed by continued
examination,’ as the statute requires.”
– Novartis AG v. Lee (January 15, 2014)

12. USPTO Proposed Rule Change
•
The proposed changes to the rules would require that the
"attributable owner" be identified:
– at the time an application is filed (or shortly thereafter),
– during the pendency of an application when there is a change
in the attributable owner (within three months of such change),
– at the time the issue fee is paid,
– when maintenance fee payments are made, and
– if a patent becomes involved in supplemental examination, ex
parte reexamination, or a trial proceeding before the Patent
Trial and Appeal Board.
• Comments on the notice of proposed rulemaking, which must be
submitted by March 25, 2014, can be sent by e-mail to
AC90.comments@uspto.gov