USPTO Proposes Rule Change Related To Patent Term Adjustment Form

The United States Patent & Trademark Office (USPTO) is proposing to amend 37 C.F.R. § 1.704(d) to require that the patent term adjustment statement regarding the timing of filing the Information Disclosure Statements (IDS) be submitted on existing Office Form PTO/SB/133.

Under certain situations, the filing of an IDS can result in a reduction of any patent term adjustment to which an applicant may otherwise be entitled. However, this reduction can be avoided if the IDS is timely filed.

For example, filing an IDS after receipt of a Notice of Allowance, or with a Request for Continued Examination (RCE) to enter the IDS, can result in reduction of period of patent term adjustment. However, under 37 C.F.R. § 1.704(d), if the IDS is filed within 30 days of certain events, the reduction can be avoided. The rule requires that, in order to avoid the reduction, the IDS be accompanied by the statement provided in § 1.704(d)(1)(i) and/or (ii).