Many Patents to Receive Longer Term

Life Sciences Vector
By: Stanley F. Chalvire
January 5, 2010

In the U.S. the term of a patent is generally twenty years from the earliest claimed filing date of the corresponding patent application. In addition to the twenty year term, issued patents may also benefit from a period of Patent Term Adjustment (“PTA”), which allows applicants to recapture patent term lost as a result of administrative delays by the USPTO during the prosecution of a subject patent application. The U.S. Court of Appeals for the Federal Circuit (“CAFC”) decision in Wyeth, et al. v. Kappos has caused the USPTO to modify the manner in which it calculates PTA to the benefit of most patentees. As a result, the majority of newly issued patents will receive a longer period of PTA. At issue in Wyeth was the USPTO’s interpretation of the statute governing PTA (35 U.S.C. § 154(b)(1)) as it relates to two distinct “periods of delay.”

Periods of Delay

35 U.S.C. § 154(b)(1) provides patentees specific assurances that relate to the prompt prosecution of their patent applications before the USPTO. Two of these assurances, often referred to as the “A” and “B” guarantees, were at issue in Wyeth. The A guarantee assures the patentee of prompt responses from the USPTO, and affords the patentee one day of term extension for each day that the USPTO fails to achieve certain examination deadlines (i.e., the period of delay). For example, one such examination deadline provides that the USPTO will issue a first action within fourteen months of an application’s filing date. Issuance of a first action after fourteen months entitles the patentee to a period of term extension which corresponds to the period of USPTO delay (i.e., the number of days in excess of fourteen months until the action is issued). On the other hand, the B guarantee assures the patentee of no more than 3 years of patent application pendency, and as is the case with the A guarantee, affords the patentee one day of term extension for each day the patent application is pending beyond 3 years.

PTA determinations are subject to several additional limitations which are set forth in 35 U.S.C. § 154(b)(2), including, for example, subtracting days of delay caused by the patentee from the additional days of PTA resulting from USPTO delays. Another such limitation, which was the subject of the dispute in Wyeth, provides that to the extent that multiple periods of delay attributable to the USPTO overlap with one another, the calculated PTA shall not exceed the number of days that the application was actually delayed. In other words, when calculating PTA the overlapping periods of USPTO delay are not “double-counted.” Rather, the USPTO only considers the longer of such periods of delay in calculating PTA.

The Wyeth v. Kappos Decision

The dispute in Wyeth stemmed from the USPTO’s determination that the period of delay resulting from its failure to issue a patent within three years (i.e., the B guarantee) commenced upon filing of the patent application rather than when and if the USPTO failed to meet the B guarantee three years after the actual filing date. This effectively caused the USPTO to ignore any periods of “A delay” which occurred during the first three years of pendency because they were considered to be overlapping with the period of “B delay”.

Wyeth petitioned the USPTO, challenging its determination of PTA as it related to two of Wyeth’s issued patents, and the petitions were denied by the USPTO. On appeal the CAFC confirmed that the USPTO was misinterpreting 35 U.S.C. § 154(b)(2) and under-calculating PTA. The USPTO has indicated that it will not seek further challenge of the Wyeth decision.

Calculating PTA Post-Wyeth

In view of the CAFC’s determination that the USPTO has been under-calculating PTA for many patentees, the USPTO has initiated the process of revising its systems to calculate PTA consistent with the Wyeth decision. Unfortunately, in many instances the recourse available to patentees who may have been subject to pre-Wyeth determinations of PTA may be limited.

Patentees may request reconsideration of their PTA determination by petitioning the USPTO and by paying the applicable fee. Submission of such a petition, however, must be made within two months of the patent’s issuance and in many instances may not be a suitable option for aggrieved patentees.

Additionally, the USPTO has implemented an interim procedure for petitioning to request recalculation of PTA without having to pay a fee. This interim procedure is available to patentees who suspect PTA miscalculations of the type which were specifically at issue in Wyeth and whose patents issued prior to March 2, 2010. Petitioning the USPTO to request recalculation of PTA using this interim procedure, however, requires that the patentee petition the USPTO no later than 180 days after the patent has issued, which again may not be a suitable option for some aggrieved patentees.

Patentees are advised to review recently issued patents to determine whether they may take advantage of these opportunities to correct previously miscalculated PTA. Although the USPTO was silent as to the types of recourse available to patentees more than 180 days removed from issuance, the outcome of several cases filed against the USPTO in the District Court for the District of Columbia may prove instructive. One such case was brought by The General Hospital Corporation, alleging that the District Court’s decision in Wyeth constituted a change in the law sufficient to invoke the doctrine of equitable tolling of the 180-day period, and that as a result plaintiffs should be entitled to relief beyond that period.

Stay tuned.

For more information, contact Stan Chalvire.