Petition for Stay in Processing of Patent Term Extension Application
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
2765 Petition for Stay in Processing of Patent Term Extension Application [R-10.2019]
Sometimes situations arise where the Office is ready to issue a Notice of Final Determination and grant a certificate of extension, but unresolved issues relating to the patent remain. Such issues could include, but are not limited to, involvement in an interference, an appeal of a trial decision by the Patent Trial and Appeal Board, or the filing of a reissue application. When such situations arise, the patent owner may want to stay the processing of the patent term extension application. A stay of processing of an application for patent term extension shall be by way of a petition under 37 CFR 1.182. Any petition for stay can only be granted for a period of up to six months. The Office analogizes such petitions for a stay in the patent term extension proceeding under 37 CFR 1.182 to requests for staying action in patent applications and for deferring issuance of a patent filed under 37 CFR 1.103 and 37 CFR 1.314, respectively. The standard for granting requests under both 37 CFR 1.103 and 37 CFR 1.314 is good and sufficient cause. When the patent term under 35 U.S.C. 154(a) and (b) has lapsed, or will lapse, for any patent(s) for which extension has been sought during any stay to be granted, the patent owner needs to show that justice requires the stay so requested. Therefore, the applicant seeking a stay in the processing of the extension application should provide detailed reasons why a stay is necessary. See, e.g., the petition for stay granted in U.S. Patent No. 8,829,165 and contrast with the petition for stay that was denied-in-part in U.S. Patent No. 5,196,404.