USPTO Launches Webpage on PTE Applications and Patent Terms Extended under 35 U.S.C. § 156
In a Patent Alert email distributed to stakeholders last week, the U.S. Patent and Trademark Office announced the launch of a new webpage providing information regarding applications for patent term extension (PTE) that have been filed within the past five years and patent terms that have been extended under 35 U.S.C. § 156. With regard to PTE applications, the new webpage provides access to a spreadsheet listing the application number, patent number, and trade name identified in the PTE application, and provides a link to the electronic file containing the PTE papers. The USPTO alert indicates that the new webpage was launched in response to stakeholder feedback requesting readily available information about PTE applications. The USPTO plans to update the information on the webpage on a quarterly basis.
USPTO Announces Fourth Extension of Modified COVID–19 Prioritized Examination Pilot Program
In a notice published in the Federal Register (87 Fed. Reg. 38714) in June, the U.S. Patent and Trademark Office announced that it was extending the modified COVID–19 Prioritized Examination Pilot Program, and that requests to participate in the pilot program would be accepted until December 31, 2022. The pilot program, which was implemented in May of 2020 and has been extended three times previously, allows applicants that qualify for small or micro entity status to request prioritized examination without paying the fees typically associated with such prioritized examination (see "USPTO Announces COVID-19 Prioritized Examination Pilot Program").
In addition to the requirement that applicants qualify for small or micro entity status, the claims of a participating application must cover a product or process related to COVID–19, and such product or process must be subject to an applicable FDA approval for COVID–19 use. Such approvals may include, for example, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA). Other requirements for participating in the pilot program include making the request at the time of filing of a non-continuing original utility or plant nonprovisional application; at the time of filing of an original utility or plant nonprovisional application claiming the benefit of an earlier filing date under 35 U.S.C. §§ 120, 121, or 365(c) of one prior nonprovisional application or one prior international application designating the United States; or at the time of filing or after the filing of a Request for Continued Examination of a plant or utility application or a national stage of an international application. However, any application that claims the benefit of the filing date of two or more prior filed nonprovisional U.S. applications or international applications designating the United States under 35 U.S.C. §§ 120, 121, or 365(c) is not eligible for participation in the pilot program. In addition, requests to participate in the pilot program must include an Application Data Sheet, be made via the Office's patent electronic filing systems (EFS-Web or Patent Center), and qualifying applications cannot present more than four independent claims, more than 30 total claims, or any multiple dependent claims.
In announcing the extension of the pilot program, the Office noted that as of May 16, 2022, 261 patents had issued from applications that had been accepted under the pilot program, and the average total pendency, from filing date to issue date, for those applications was 280 days.
As we reported earlier this year in our "Top Patent Law Stories of 2021" webinar, of the 149 patents that recite "COVID-19" or "SARS-CoV-2" in the claims (as of January 2022), 89 issued from applications that had been accepted under the pilot program, and the average total pendency for those applications was 280 days. This compared favorably with the 41 patents that recite "COVID-19" or "SARS-CoV-2" in the claims where examination was accelerated under the Track One Prioritized Examination Program, and where the average total pendency was 259 days.
USPTO Announces Continuation of PPH Pilot Program with IMPI
In a notice published in the Official Gazette (1499 OG 496) in June, the U.S. Patent and Trademark Office announced that the Mexican Institute of Industrial Property (IMPI) and USPTO had agreed to extend the Patent Prosecution Highway (PPH) pilot program between the two offices. Under the PPH pilot program, which was extended to June 30, 2027, the USPTO will treat as timely any PPH request based on IMPI work product filed in the USPTO on or before June 30, 2027.
USPTO Makes Electronic Filing of PTE Applications Permanent
In May 2020, the U.S. Patent and Trademark Office announced that because it considered the effects of the COVID-19 pandemic to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183, the Office would permit patentees to file initial Patent Term Extension applications that meet certain criteria via EFS-Web or Patent Center (see "USPTO News Briefs, June 2, 2020). At the time, the Office noted that while the waiver would be "effective only until the USPTO provides further notice," it was making efforts to allow for electronic filing of PTE applications on a permanent basis.
In a notice of proposed rulemaking published in the Federal Register (87 Fed. Reg. 27043) in May, the U.S. Patent and Trademark Office announced a proposal to amend the Rules of Practice in Patent Cases to require that patent term extension (PTE) applications, interim PTE applications, and any related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system (EFS- Web or Patent Center). According to the Office, the proposed rule changes would reduce the administrative burden on PTE applicants, as well as improve administrative efficiency by facilitating electronic file management, optimize workflow processes, and reduce processing errors. The Office noted that it had received informal feedback with respect to the processing of electronic PTE applications under the COVID-19 pandemic waiver, and stakeholders had communicated unanimous support for electronic filing of initial PTE submissions. The Office also noted that the USPTO and its partner agencies had successfully implemented a system by which the USPTO electronically transmits a copy of any initial submission for PTE to the relevant agency, and that the new system had not caused any processing errors.
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