Starting July 17, 2023, to ensure an efficient avoidance of a negative PTA, in certain instances, revised 37 CFR 1.704(d) will include a new paragraph (d)(3) requiring the use of Office form PTO/SB/133 and the appropriate document code (PTA.IDS). The use of the document code PTA.IDS specifically for form PTO/SB/133 is a representation that the applicant is filing form PTO/SB/133 with no alterations to the text of the form.

“Safe Harbor”

Currently, 37 CFR 1.704(d) provides a “safe harbor,” for (1) a filing containing only an information disclosure statement (IDS) or (2) a request for continued examination (RCE) filing with no additional submission other than an IDS, if accompanied by the required statement under 37 CFR 1.704(d)(1). With the required statement, these filings will not be considered applicant delay resulting in a reduction of patent term adjustment (PTA).

Starting July 17, 2023, revised 37 CFR 1.704(d) will include a new paragraph (d)(3) requiring applicants to submit the required “safe harbor” statement via Office form PTO/SB/133 using the appropriate document code (PTA.IDS). By using the required form and document code, the Office’s PTA computer program will be able to determine when the required safe harbor statement under 37 CFR 1.704(d)(1) has been filed in the application so that a request for reconsideration of PTA can be avoided.

If an applicant fails to use the Office form or document code and, for example, submits their own statement under 37 CFR 1.704(d)(1), the applicant can still avoid losing PTA. In this case, the applicant will need to submit a request for reconsideration of PTA (37 CFR (§ 1.705(b)) for the IDS not to be considered applicant delay.

Additionally, the Federal Register notice indicates that if an applicant submits an IDS within the 30-day period but does not include the safe harbor statement, the applicant should consider filing a request for reconsideration of PTA along with the safe harbor statement and a petition to suspend the rules under 37 CFR 1.183 requesting that the Office consider the statement when making the PTA determination.

Take Away

Using form PTO/SB/133 and the appropriate document code (PTA.IDS) for the “safe harbor” allows the Office’s computer program to recognize the safe harbor and does not consider the submission as applicant delay. Furthermore, use of form PTO/SB/133 likely avoids having to later submit a request for reconsideration of PTA. For applicants concerned about PTA, this can save time and money. Also, it is still prudent to double check the USPTO’s determination of PTA, which can be incorrect.