The Patent Act authorizes the U.S. Patent Office (PTO) to set a deadline from 30 days to six months for an applicant to respond to any PTO action. See 35 U.S.C. §133. The act further specifies that:
“when the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.”“when the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.”
See 35 U.S.C. § 21(b). Applicants commonly use this so-called next business day, see 37 C.F.R. § 1.7, M.P.E.P. 710.05, to timely file responses, which are due on a weekend or federal holiday, on the next business day.
The Patent Act also allows for the adjustment of a patent’s term when the PTO fails to take certain actions within a specified period (so-called “PTO delay”). See 35 U.S.C. § 154(b). Determination of patent term adjustment takes both PTO delay and applicant delay (i.e. applicant’s failure to timely respond to PTO actions) into account. The current PTO interpretation of the Patent Act, as it pertains to patent term adjustment, is that a response timely filed under the next business day rule nevertheless results in one day of applicant delay.
Recently in Arqule, Inc. v. Kappos, the PTO interpretation of the Patent Act was challenged. 793 F.Supp.2d 214 (D. D.C. 2011). During the prosecution of the patent at issue, Arqule timely filed a response under the next business day rule, but as a result, Arqule was deducted one day of applicant delay. Id. at 3. The court sided with Arqule and held that any response timely filed under the next business day rule does not result in applicant delay. Id. at 16. Therefore, the PTO cannot reduce the period of patent term adjustment for applicant delay where an applicant timely files a response to any notice or action by the PTO within three months of the mailing date under the weekend/holiday exception. Id.
Despite this decision, PTO has not yet revised its rules. Accordingly, responses timely filed under the next business day rule are still indicated as resulting in a day of applicant delay. When reviewing the patent term adjustment determination of an allowed application, practitioners need to be mindful of this error on the side of the PTO and should consider filing requests for reconsideration prior to payment of the issue fee. Subsequent to the district court decision, petitions on this point have been granted. Furthermore, to avoid incurring the cost of filing such requests for reconsideration, applicants may also consider filing responses without relying on the next business day rule.