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DOC/PTO RIN: 0651-AC96 Publication ID: Spring 2015 
Title: Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee 
Abstract: The United States Patent and Trademark Office (Office) is proposing changes to the rules of practice pertaining to the patent term adjustment provisions of 35 U.S.C. 154(b) in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014). The Federal Circuit confirmed in Novartis that any time consumed by continued examination under 35 U.S.C. 132(b) is subtracted in determining the extent to which the period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years, regardless of when the continued examination under 35 U.S.C. 132(b) was initiated. The Federal Circuit, however, decided that the time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office is proposing changes to the rules of practice to provide that the time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. Also, the Office is proposing changes to the rules of practice to provide that the submission of a request for continued examination under 35 U.S.C. 132(b) after a notice of allowance under 35 U.S.C. 151 has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. 
Agency: Department of Commerce(DOC)  Priority: Substantive, Nonsignificant 
RIN Status: Previously published in the Unified Agenda Agenda Stage of Rulemaking: Completed Actions 
Major: No  Unfunded Mandates: No 
CFR Citation: 37 CFR 1.7   
Legal Authority: 35 U.S.C. 132(b)    35 U.S.C. 154(b)    35 U.S.C. 2(b)(2)   
Legal Deadline:  None
Timetable:
Action Date FR Cite
NPRM  06/18/2014  79 FR 34681   
NPRM Comment Period End  08/18/2014 
Final Rule  01/09/2015  80 FR 1346   
Final Rule Effective  03/10/2015 
Regulatory Flexibility Analysis Required: No  Government Levels Affected: None 
Small Entities Affected: No  Federalism: No 
Included in the Regulatory Plan: No 
RIN Data Printed in the FR: No 
Agency Contact:
Raul Tamayo
Department of Commerce
Patent and Trademark Office
600 Dulany Street, P.O. Box 1450,
Alexandria, VA 22313
Phone:571 272-7728
Fax:571 273-7728
Email: raul.tamayo@uspto.gov