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.

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