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ARTICLE · 20 JULY 2022

USPTO Proposes To Require Form For IDS PTA Safe Harbor

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The USPTO Patent Term Adjustment (PTA) rules include a "safe harbor" that avoids a PTA deduction for "Applicant delay" for Information Disclosure Statements that are accompanied by a certain statement...

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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The USPTO Patent Term Adjustment (PTA) rules include a "safe harbor" that avoids a PTA deduction for "Applicant delay" for Information Disclosure Statements that are accompanied by a certain statement averring that the items being submitted only were recently cited in another application. Under current rules, the statement can be provided in any paper submitted with the IDS, including USPTO form PTO/SB/133. The USPTO is now proposing to require use of USPTO form PTO/SB/133 in order to invoke the safe harbor.

IDS-Related PTA Deductions

As discussed in this article, there is a mismatch between the timing requirements of the Information Disclosure Statement (IDS) rules and the PTA rules. An IDS that is timely under the IDS rules can lead to a PTA deduction for "Applicant delay" under certain circumstances, such as when an IDS is filed after a reply to an Office Action has been filed, or after a Request for Continued Examination (RCE) has been filed. Such PTA

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