1. What Are the Provisions Under 35 US Code Section 132?
2. What Do the New Rules on Patent Term Adjustment State?
3. The First New Rule
4. The Second New Rule
5. How Does the Request for Continued Examination (RCE) Apply?
6. What Should Be Considered When Having a Patent Processed?

The 35 U.S. Code § 132 is a law which mandates the USPTO to notify a patent applicant whenever his patent is rejected, stating the reasons the organization took action to enable the applicant to apply for re-examination.

What Are the Provisions Under 35 US Code Section 132?

The provisions of the 35 U.S. Code § 132 include the following:

  • Whenever a patent application is rejected, or the USPTO makes certain objections or requirements regarding a patent application during the examination, the applicant must be notified of the reasons for the requirements, objections, or rejection of the application.
  • The code goes further to state that the notification must include relevant information and references that may guide the applicant in his application for re-examination.
  • If the applicant decides to apply for a re-examination after receiving the notification of rejection, regardless of conducting an amendment or not, the USPTO is required to re-examine the application.
  • No revision can be made through an amendment to the original patent application.
  • The Director shall state the terms under which the applications for patents can be re-examined.
  • The Director will decide the fees payable for the re-examination of a patent application and where applicable offer a 50 percent reduction in the application fees as per the provisions of section 41(h) (1).

What Do the New Rules on Patent Term Adjustment State?

Following the outcome of the Novartis v. Lee lawsuit, the Federal Register released new rules regarding patent term adjustment (PTA) on January 9, 2015. The new rules apply to patents where the applicant filed for a re-examination during the original prosecution. The two rules are as follows:

  • Patent applicants are eligible to B-Delay between allowance and issuance of the patent, effective January 9, 2015.
  • A new type of applicant delay comes into force when a request for continued examination is filed after allowance, effective March 10, 2015.

The First New Rule

The first new rule amends section (b) (1) of 37 CFR 1.703 thus; the period of adjustments of the terms of a patent according to the provisions of subsection 1.702(b), where applicable, is three years from the day after the patent application was filed under 35 U.S.C. 111(a) or the start of the national stage as per the provisions of 35 U.S.C. 371(b) or (f) if it is an international patent application with the patent issuance date being the end date, excluding the sum of the following time intervals:-(1) The number of days, if applicable, within the time from the commencement date of filing for an RCE of the application according to 35 U.S.C. 132(b) while the end date shall be the date on which a notice of allowance was mailed as per the provisions of 5 U.S.C. 151.

The implication of this is that the time interval after applying for RCE does not apply to the time after mailing a notice of allowance with regards to PTA.

The Second New Rule

The second rule modifies the wordings of section (c) (12) of 37 CFR 1.704 to mean that when an RCE has been filed in response to a Notice of Allowance, the period for B-Delay comes into effect, thus resulting in application delay, and the applicant will lose PTA during the time interval between the date when the notice of allowance was mailed and the date of filing the RCE.

How Does the Request for Continued Examination (RCE) Apply?

According to the decision of the Federal Circuit, B-Delay is not permissible during the period of continued examination after filing for an RCE. In cases where the request for continued examination was filed while the prosecution was ongoing, the Federal Circuit concludes that applicants qualify for B-Delay during the time interval between allowance and issuance.

What Should Be Considered When Having a Patent Processed?

For USPTO-calculated PTA in Issue Notifications mailed on the date when the new rules take effect or after, patentees should consider the implications of the new PTA rules. It might be necessary for applicants to review the new rules to determine whether it affects their patents in cases where they filed an RCE during prosecution. If so, they might have to file a request for PTA reconsideration for their application under 37 CFR 1.705 within seven months of their patent's issuance.

If you need help with 35 U.S. Code § 132, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.