Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[patentatt]

37 C.F.R. 1.704(c)(11) states:

"Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent."

This is listed as one example of activity that will reduce PTA that would otherwise be available to applicants (see 1.704(c)).

My question is: does "continuing application" here refer to RCEs as well as continuations?  Or just continuations?

In other words, does 1.704(c) distinguish between RCEs and continuations so that, if you just file RCEs and not continuations, you can get a lot more PTA.

Of course, there are three types of PTA - A, B, and C - and type B explicitly forbids PTA due to RCEs.  But type A and C do not.  So, if 1.704(c)(11) refers only to continuations, and not RCEs, then under it applicants who file RCEs instead of continuations might be getting a lot more type A and type C PTA.

[patentatt]

Nevermind, I answered my own question.

MPEP 2732, which discusses Rule 1.704(c)(11) states (at page 21):

The provisions of 35 U.S.C. 132(b) and 37 CFR 1.114 permit an applicant to obtain further or continued examination of an invention disclosed and claimed in an application, which renders it unnecessary for an applicant whose application is eligible for patent term adjustment under 35 U.S.C. 154(b) to file a continuing application to obtain further examination of an invention disclosed and claimed in an application.

So 1.704(c)(11) doesn't apply to RCEs.

Which means that filing RCEs preserves type A and C PTA, but filing continuations does not.

[klaviernista]

This presentation sums PTA up nicely, and I believe it is still current:

http://www.grayonclaims.com/storage/PTAPolkBrinckerhoffWegnerREV2.pdf

In regard to your question, see slide 10

[patentatt]

This presentation sums PTA up nicely, and I believe it is still current:

http://www.grayonclaims.com/storage/PTAPolkBrinckerhoffWegnerREV2.pdf

In regard to your question, see slide 10

Yes, thank you - that's very helpful!

[patentatt]

Another question:

Suppose you file an appeal brief upon your first final rejection (no prior RCE or continuation).

The BPAI takes forever and issues an affirmance three years after the notice-of-appeal, and five years after the application was filed.

You don't get type A PTA for the BPAI taking forever, because type A doesn't cover BPAI decisions (just responses from the examiner).

You don't get type C PTA, because you didn't win the appeal.

Question: do you get type B PTA for the application taking more than three years?

More specifically - is filing an unsuccessful appeal considered grounds for reduction of PTA?

It seems to me that it would be good (or at least acceptable) policy for unsuccessful appeals to not cause PTA.  Otherwise, applicants might (conceivably) file frivolous appeals just to extend their term into the future.

On the other hand, I cannot find any provision in the USC or CFR that prevents type B PTA in this situation.  It seems to me that applicants DO get type B PTA from unsuccessful appeals.

Can anyone confirm this?

[patentatt]

Another question:

Suppose you file an appeal brief upon your first final rejection (no prior RCE or continuation).

The BPAI takes forever and issues an affirmance three years after the notice-of-appeal, and five years after the application was filed.

You don't get type A PTA for the BPAI taking forever, because type A doesn't cover BPAI decisions (just responses from the examiner).

You don't get type C PTA, because you didn't win the appeal.

Question: do you get type B PTA for the application taking more than three years?

More specifically - is filing an unsuccessful appeal considered grounds for reduction of PTA?

It seems to me that it would be good (or at least acceptable) policy for unsuccessful appeals to not cause PTA.  Otherwise, applicants might (conceivably) file frivolous appeals just to extend their term into the future.

On the other hand, I cannot find any provision in the USC or CFR that prevents type B PTA in this situation.  It seems to me that applicants DO get type B PTA from unsuccessful appeals.

Can anyone confirm this?

Anybody know the answer to this?

http://youtu.be/NP0mQeLWCCo