ACTELION PHARM., LTD v. MATAL, 17-1238, decided February 6, 2018

U.S. Patent No. 8,658,675, directed to Pyridin-4-yl Derivatives.

In Patent Term Adjustment, the 14-month delay deadline for the PTO begins upon (a) commencement of the national stage under section 371 or (b) date of fulfillment of the requirements of section 371 (pages 3-4).  371(f) allows for commencement at the express request of the applicant, while 371(b) allows for commencement with expiration of the 30 month deadline (pages 4-5).  Patentee filed all needed documents four days before the 30 month date and a preliminary amendment noting that “Applicant earnestly solicits early examination” (pages 5-6).  The PTO form 1390 filed with the application included a 371(f) box, which was not checked (page 6).  Under the old “fulfillment” ((b) above), 371(f) was not fulfilled despite all the other 371 sub-parts being met (pages 9-12).  The form language in the preliminary amendment soliciting early examination is not an express request under 371(f), even where using the 1390 form is not required (pages 12-13).  The form language of the preliminary amendment with no reference to 371(f) or nationalization is not an express election of 371(f) (page 13).

Hindsight:  This is an easy one.  Where possible (all required papers filed with the application), it may be best to expressly indicate the desire to commence pursuant to 371(f).  Check the 371(f) box or make a specific request “under 371(f)” when nationalizing pursuant 371.