America-Israel Patent Law Blog

In April this year, the USPTO announced a new program that it’s calling “PIER”, which is short for “PCT Informed Examination Request Pilot Program”.  Under PIER, certain US PCT national phase applications are “selected” for participation in the program.  If an applicant or its representative receives a PIER notice, the applicant has two months to respond. It must respond using USPTO Form PTO/SB/478, which presents the applicant with three choices: proceed with examination, delay examination, or expressly abandon the application.

The fact that the program was instituted at all, and the FR notice about it, raise a number of questions, and maybe I’ll address those in a future post.  But this post focuses on just one aspect of PIER, namely how it robs applicants of patent term adjustment (PTA) to which they’re entitled.

The background to PTA is that prior to the GATT/TRIPs agreements in the 1990’s, US patents expired 17 years from the date of grant (provided that maintenance fees were timely paid). The result of GATT/TRIPs, which took effect in June 1995, was that US patents expire 20 years from the earliest non-provisional US filing date of the patent. Some parties complained that this meant that if examination took more than three years, they were being shortchanged on patent term compared to what had been prior to June 1995. So when Congress enacted the American Inventors Protection Act in 1999, the Act included provisions that entitled patentees to an adjustment of patent term if examination took too long. These are codified at 35 U.S.C. §154, the relevant part of which for the present discussion says at (b)(1)(A)(i),

Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to — (i) provide at least one of the notifications under section 132  or a notice of allowance under section 151  not later than 14 months after— (I) the date on which an application was filed under section 111(a); or (II) the date of commencement of the national stage under section 371 in an international application…the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i)…until the action described in such clause is taken.

35 U.S.C. §132 in turn says,

(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

In other words, if within 14 months of PCT US national phase entry, the Office does not substantively reject a claim (e.g. for lack of novelty, for obviousness, or for failure to meet the written description or enablement requirements), object to something in the application (e.g. object to a claim for depending from a rejected claim but being allowable if re-written in independent form, or object to a drawing as not meeting the requirements for drawings), or issue a requirement (e.g. a requirement for restriction of the claims to one invention, pursuant to 35 U.S.C. §121), the applicant is entitled to an adjustment of patent term to compensate for the delay. In some fields, such as pharmaceuticals, each day of PTA can be extremely valuable.

Clearly, a PIER notice is not a rejection of claims or an objection. Nor does it constitute a requirement, at least not in the sense of being a requirement that the Office is empowered by statute to make.  There are certain pieces of information that an applicant must provide as part of the application process (like the names of the inventors), or in the course of certain proceedings before the Office. And in some situations, the PTO can tell the applicant/patentee that the information it has provided is insufficient in order for the Office to grant the party some sought-after relief, such as revival of an abandoned patent or application. In those cases, it is either the statute itself that makes the submission of that information necessary, or the statute authorized the PTO Director to establish (by regulation) that submission of certain information is necessary for the relief sought. But nowhere does the patent statute refer to something called a “requirement for information”, nor does statute anywhere explicitly authorize the Director to sua sponte require an applicant to provide “information”.

But adherence to the statute has never been an obstacle for the USPTO, and thus the USPTO classifies a PIER notice as a “requirement for information”.  As stated in the Federal Register announcement:

The USPTO will select certain national stage patent applications for the program. In an application selected for the program, the USPTO will issue a requirement for information…

In other words, the PTO is treating a PIER notice as a fulfillment of its duty to issue a rejection, objection or requirement within 14 months of national phase entry, even though the PIER notice does nothing to advance patent prosecution.

35 U.S.C. §154(b)(1)(A)(ii) includes another relevant provision for when PTA accumulates: if the PTO fails to “respond to a reply under…within 4 months after the date on which the reply was filed or the appeal was taken”. 

So if a PIER notice is sent, say, 13 months after national phase entry, and the applicant responds at the two month deadline, that’s 15 months. And if the examiner then issues a first office action four months after that, that’s 19 months from national phase entry.  Under the statute, that would entitle the applicant to PTA of five months. But by calling the PIER notice a “requirement”, the PTO is now giving itself more time to delay, without compensation to the applicant for the time lost.  And if the PTO takes longer to issue the first substantive OA, that’s even more time robbed from the applicant.

Presumably, the PTO assumes that the cost of challenging its view about a PIER notice constituting a “requirement” under 35 U.S.C. §132 – which will necessitate suing the PTO in federal district court and then, in all likelihood, appealing – will dissuade most would-be challengers from pursuing that course of action. If the PTO is careful in its “selection” of applicants whose applications are subject to PIERs notices, it will probably prove correct in this calculation. But all it will take is one deep-pocketed patentee for PTA is valuable, and who was denied the PTA it deserves because of PIER, for the matter to find its way to the bench of an Article III judge.