Because No One is Immune to the Law
May 24, 2022 - United States, Intellectual Property

The USPTO Proposes to Establish Permanent Electronic Filing for Patent Term Extension Applications

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On May 6, 2022, the United States Patent and Trademark Office (USPTO) issued a Notice, proposing to amend the Rules of Practice in Patent Cases to allow electronic submissions of patent term extension (PTE) applications, interim PTE applications, and any related submissions to the USPTO via the USPTO patent electronic filing system (EFS-Web or Patent Center).[1]

Electronic filing of initial submissions for PTE was prohibited prior to the COVID-19 pandemic. Due to the workplace changes caused by the pandemic, the USPTO temporarily waived its prohibition on the electronic filing of initial submissions for PTE and the triplicate copy requirements in 37 CFR 1.740(b) and 1.790(b). Since then, the USPTO has received informal feedback from stakeholders that communicated unanimous support for electronic filing of initial PTE submissions. Additionally, the USPTO and its partner agencies have successfully implemented a new system that allows the USPTO to electronically transmit a copy of the PTE submission to the relevant agency without causing any processing errors. Accordingly, the USPTO is proposing to change its rule of practice permanently.

The USPTO has created several new document descriptions for electronic submissions, including “Limited POA and/or Change of Address for a Patent Term Extension Application” for limited powers of attorney and/or changes of correspondence address that are filed specifically for the PTE application. These new descriptions are likely to reduce processing errors by the USPTO, especially where the PTE applicant engages a different law firm for prosecution of the PTE application than for the underlying patent, or where the PTE applicant is a different entity than the patent applicant.

Furthermore, as has been the case since the June 2020 electronic filing waiver went into effect, the proposed rule changes will result in PTE applications being viewable on the USPTO electronic viewing systems (Patent Application Information Retrieval (PAIR) system or Patent Center) immediately upon filing. This provides an opportunity for companies to have better competitive intelligence. Whereas third parties previously had to wait weeks or months after a product’s approval to view the associated PTE applications, electronic filing provides the public with real-time visibility into PTE applications that have been filed.

Overall, these are welcome improvements to the PTE filing process, reducing the administrative burden on applicants, streamlining various aspects of the filing process, and improving public availability of PTE applications. If anyone wishes to submit a comment about this proposed amendment, it must be received by the USPTO by July 5, 2022 to ensure consideration. The comment must be submitted through the Federal eRulemaking Portal at (search docket number “PTO-P-2021-0061”).

[1] The full text of the Notice can be found at Federal Register: Establishing Permanent Electronic Filing for Patent Term Extension Applications.