June 22, 2023

Volume XIII, Number 173

Advertisement
Advertisement

June 22, 2023

Subscribe to Latest Legal News and Analysis

June 21, 2023

Subscribe to Latest Legal News and Analysis

June 20, 2023

Subscribe to Latest Legal News and Analysis
Advertisement

Don't Miss Out On Patent Term -- Use The USPTO IDS PTA Safe Harbor Form

Effective July 17, 2023, the USPTO will "require" Information Disclosure Statement (IDS) Patent Term Adjustment (PTA) safe harbor statements to be made on a specific USPTO form and electronically filed under a specific document code. According to the Federal Register Notice, if these procedures are followed, the USPTO PTA calculation should recognize the safe harbor filing and not charge a PTA deduction for the concurrently filed IDS. 

Although the rule "requires" use of the new form, the USPTO will permit patent owners who submit a safe harbor statement in a different format to request reconsideration of a PTA award that charged a PTA deduction for the IDS at issue. This is a change from the originally proposed rule, made in response to public comments submitted on the proposed rulemaking. I know comments from Intellectual Property Owners Association included this suggestion.

The Federal Register Notice also points out the possibility of retroactively filing a safe harbor statement, via a petition to suspend the rules under 37 CFR 1.183 that can be filed with a request for reconsideration of a PTA award along with the "late" safe harbor statement. 

© 2023 Foley & Lardner LLPNational Law Review, Volume XIII, Number 172
Advertisement
Advertisement
Advertisement

About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm
Partner

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...

202.295.4094