Delay in the submission of any document at the time of filing affects your patent application in many ways. One such delay is the effect of late IDS filing on patent term adjustment. The USPTO calculates the 20-year term of the patent grant from the date of filing the application. This 20 year time comprise the complete prosecution period. The period of prosecution associates with itself the delays which are at the end of the applicant and/or patent office. This called for patent term adjustment post-grant of the patent.
According to 35 U.S.C. § 154(b)(2)(C) “The Patent term adjustment will reduce by a period equal to the time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.”
Taking on this, the effect of late IDS filing reduces the patent term adjustment.
Ideal IDS Filing Time
In the patent lifecycle, there are ideal timings for each and every step to take place. Similarly, there is the right time for filing an Information Disclosure Statement for smooth prosecution and timely patent grant. The timings are:
- For national applications: within 3 months of patent filing or on/before the mailing of the first office action. After this period but before the prosecution of the examination closes i.e. the final office action, or a notice of allowance, or Ex Parte Quayle Action, whichever is earlier.
- For international application: within 3 months of the date of entry of the national stage. Or before the mailing of first office action in the national stage. After this period or on/before the payment of the issue fee.
- Continued examination: before the mailing of the first office action. After this period or on/before the effective withdrawal of the patent application from issue under 35 U.S.C. 1.313(c).
If you file IDS after the above mentioned time period your patent application will no longer be considered.
To learn more, read: IDS Patent: Definition, Obligation, and Requirements in Patent Applications
Types of Delays
The prosecution at the Patent Office is not an easy task. It has its hurdles and complexities. But this can adversely affect the duration of the patent grant. The USPTO is solely responsible for these types of delays and makes patent term adjustments accordingly. These delays include:
- ”A delay”(35 U.S.C. §154(b)(1)(A)(i) and 35 U.S.C. §154(b)(1)(A)(ii)): failure to issue the first office action within 14 months of filing the application and other applications within 4 months of receipt of an applicant’s response.
- “B delay” (35 U.S.C. §154(b)(1)(B)): failure to issue a patent within 3 years from filing.
- “C delay” (35 U.S.C. § 154(b)(1) (C)(i) – (iii)): delays due to Patent Trial and Appeal Board, secrecy orders and interferences.
For these types of delays, only the USPTO is responsible and will increase the duration of the patent grant.
- Applicant Delay: There is another type of delay at the end of the applicant. This can because of late submission of a reply, or any document. Also, because of filing a supplemental reply or document other than what the patent examiner requested. One such case is the effect of late IDS filing on patent term adjustment. These reasons cause a reduction in the patent term adjustment.
Overlapping Days: the calculation of overlapping days in between delay A and B, and delay A and C. The PTO subtracts the number of overlapping days so that the days do not repeat twice.
We can understand this through an equation:
Patent Term Adjustment (PTA) = A Delay + B Delay + C Delay – Applicant Delay – Overlapping Delays.
Effect of Late IDS Filing – A Case Study
If the court finds a delay in the prosecution because of the applicant will result in a reduction of the patent term adjustment. Moreover, the statute also accounts for the delay and will reduce the term of PTA if he/she fails to engage in reasonable efforts to conclude prosecution of the application. One such effect of late IDS filing illustrates this case study.
Gilead Sciences v/s the Federal Circuit – Case No. 14-1159 (Fed. Cir, Feb. 26, 2015)(Wallach, J.).
February 22, 2008- Gilead filed a patent application for the ‘374 patent.
November 18, 2009; the PTO issues a restriction requirement. Sometimes the patent examiner finds that there is more than 1 patentably distinct invention in claims. They issue a restriction requirement to divide the claims into segments (37 C.F.R. § 1.142 (2007)).
February 18, 2010: Gilead responded to the restriction requirements and selected one of the 4 groups of inventions.
April 16, 2010: in the meanwhile, Gilead filed supplemental IDS disclosing 2 other co-pending patent applications of Gilead.
July 29, 2011: the PTO issued a notice of allowance.
April 3, 2012: patent issued for the ‘374 patent.
Both the parties agreed that Gilead should get a PTA because of the delay on part of PTO. They issued 245 days of ‘A Delay” and 406 days of “B Delay”. This 651 days reduced by overlapping and applicant-induced delay.
35 days of overlapping delay and an additional 57 days of applicant-induced delay.
October 27, 2011: Gilead contested its filing of the supplemental IDS did not cause any actual delay. But the PTO rejected this argument because Gilead’s filed supplemental IDS after its response to the restriction requirement. And also it failed to engage in a reasonable effort to conclude prosecution stated in 37 C.F.R. 1.704(c)(8).
In this case, late supplemental IDS caused a delay in the process of prosecution. Hence, the effect of late IDs filing results in reduced patent term adjustment.
Why Choose SmartIDS Solutions?
The effect of late IDS filing on Patent Term Adjustment is surely not in favor of you as an inventor/applicant. We, at SmartIDS Solution, are here to help you out. Timely delivery of information disclosure statements and opportune patent grant for your invention is our top priority. We provide ready to file IDS forms in USPTO prescribed format. Our team remains up-to-date with the current regulations and always comply with the rules of the USPTO. To know how it works, do give a visit to Smart IDS Solutions.
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