Final Patent Term Adjustment (PTA) Rules In view of Novartis AG v. Lee

January 30, 2015

On January 9, 2015, the USPTO published final Patent Term Adjustment (PTA) rules to address the treatment of Requests for Continued Examination (RCEs) in light of the Federal Circuit’s decision in Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014).

The final rules confirm that time consumed by an RCE does not include time after the mailing of a Notice of Allowance, unless another RCE is filed after allowance. The final rules also provide that filing an RCE after notice of allowance constitutes a failure by Applicant to engage in reasonable efforts to conclude examination, resulting in Applicant delay. However, the final rules provide an exception to Applicant delay for RCEs filed after allowance solely to submit information cited in a patent office communication in a counterpart application within thirty days of receipt of the patent office communication. Lastly, the final rules implement Applicant delay under 37 CFR 1.704(c)(13) for failing to provide an application that is in condition for examination within eight months of its filing date or commencement of the national stage.


Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014):