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§ 1.704(c)(10) has changed the list of papers that can be submitted after a notice of allowance is mailed without adversely impacting PTA. 15-AP-A. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Comments are moderated and will not appear until approved by the author. Pursuant to 28 U.S.C. (URLs automatically linked.) The public comment period is from August 5 to September 4. "Patent Docs" does not contain any legal advice whatsoever.
Proposed change to Federal Circuit ECF rules Rob Miller to: Rules_Support 03/09/2015 10:09 PM Hide Details From: Rob Miller
"Patent Docs" does not contain any legal advice whatsoever. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. Public comments must be received by the Clerk of Court on or before May 27, 2020, and may be submitted either by email to FederalCircuitRules@cafc.uscourts.gov or by mail to Proposed Rules Comments 2020, Clerk’s Office, U.S. Court of Appeals for the Federal Circuit, 717 Madison Place, N.W., Washington, D.C. 20439. The notice also indicates that the Office is currently modifying its PTA computer program, which uses information recorded in the USPTO's Patent Application Locating and Monitoring (PALM) system to make an initial PTA determination, to implement the changes in the final rule. Your comment has been saved. Reg. § 1.705(b) (In addressing the seven comments the Office received in response to its notice of proposed rulemaking, the final rule also indicates that nothing in the revisions to 37 C.F.R. Error type: This weblog is intended primarily for other attorneys. The members of this Committee have the opportunity to learn the details of Federal Circuit rules and the policies behind them. § 1.704(c)(2));According to the Office's notice, the revisions to the rules will specify a period of reduction corresponding to "the period from the beginning to the end of the applicant's failure to engage in reasonable efforts to conclude prosecution" as opposed to the consequences to the Office of applicant's failure to engage in reasonable efforts to conclude prosecution.Supernus challenged the Office's PTA determination in the Eastern District of Virginia, contending that it was entitled to at least 546 of the 646 days of PTA reduction (In January of 2019, the Federal Circuit reversed the District Court's grant of summary judgment in favor of the USPTO, finding that because there were "no identifiable efforts" that Supernus could have undertaken in the time period between the filing of an RCE during prosecution of the application that issued as the '897 patent and the mailing of an EPO notification of opposition for a European counterpart patent (which resulted in Supernus filing a supplemental Information Disclosure Statement during prosecution of the '897 patent), Supernus had not failed to engage in reasonable efforts to conclude prosecution during that time period. of mailing of the supplemental Office action or notice of allowance; supplemental Office action or notice of allowance; and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
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Comments are moderated, and will not appear until the author has approved them. § 1.704(c) in which the term "mailing date" was changed to "date of mailing," but where no changes were made to the period of reduction of PTA, are not included below; a complete version of the revised rule can be found in the Federal Register notice for the final rule; bold, underlined text indicates changes to the rules since the Office's notice of proposed rulemaking).This is only a preview. Similarly, the provisions of §§ 1.56, 1.97, and 1.98 are not a basis for considering an information disclosure statement including information that has come to the attention of the applicant after a notice of allowance has been given or mailed to be a paper "expressly requested by the Office" within the meaning of § 1.704(c)(10). In the final changes to 37 C.F.R. Please enable JavaScript if you would like to comment on this blog.The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter. (Name is required. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This prevents automated programs from posting comments. 36335), in which the Office set forth revisions to the rules of practice concerning Patent Term Adjustment (PTA) in view of the Federal Circuit's decision in Supernus Pharm., Inc. v. Iancu. Your comment could not be posted. Page 1 of 1 file://C:\Users\skillmanf\AppData\Local\Temp\notesC7A056\~web8818.htm 3/18/2015 . by ... product sponsor with confidential access to the biosimilar application and relevant manufacturing information for the proposed biologic.
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