Finnegan

February 2010 Issue

The Federal Circuit Says


The USPTO’s method of calculating patent term adjustment (PTA) misinterprets 35 U.S.C. § 154(b)(1) and is flawed.  According to the Court, patent applicants should be entitled to not only a term adjustment that accounts for delays caused by the USPTO’s failure to meet certain examination guidelines, but also for the delays due to the USPTO’s failure to issue a patent within three years of filing, to the extent those delay periods do not occur on the same calendar days.  The Court further opined that delays attributable to the USPTO’s failure to issue a patent within three years of filing can only begin to accumulate after three years from the application’s filing date.  Thus, contrary to the USPTO’s treatment of PTA, these three-year delays cannot overlap with delays caused during prosecution before the date that is three years after the application’s filing date.  Wyeth v. Kappos, No. 09-1120 (Fed. Cir. Jan. 7, 2010).  Under the Court’s decision, therefore, some applicants may be entitled to a greater term adjustment than that calculated by the USPTO.

After the Court’s ruling, the USPTO issued a statement confirming that it will not seek further review of the Wyeth decision.  In addition, the USPTO is in the process of modifying its computer programs for calculating PTA.  It expects these modifications to be completed by March 2, 2010.  In the meantime, however, the USPTO has established interim procedures for requesting PTA recalculation in light of the Wyeth ruling.  In particular, the USPTO is providing an alternative to a Rule 1.705(d) petition for any patent issued before March 2, 2010.  For such a patent, a patentee can request recalculation of PTA without a fee and within 180 days of the patent’s issuance, if the alleged error is due to only the pre-Wyeth interpretation.  A simple form is provided for that request.  This alternative, however, does not preserve the right to have the PTA reviewed by a court.  Should a patentee wish for such review, he or she must still follow Section 154(b)(4) and file a civil action within 180 days of the patent’s issuance.  This alternative procedure also does not apply to requests to reconsider PTA due to non-Wyeth errors. 

The USPTO will begin deciding pending requests to reconsider PTA in accordance with the framework of the Wyeth decision.  For requests for reconsideration that were decided under the pre-Wyeth framework, patentees may file a request for reconsideration of that decision within two months of the decision, under Rule 1.181(f).  Finally, for patents issuing after March 2, 2010, patentees must file a request for reconsideration of PTA under Rule 1.705(d) within two months of the patent’s issuance.

Patentees interested in pursuing any additional PTA available under the Wyeth framework should review all patents issued within the past 180 days to determine if options exist for pursuing the additional PTA that may not have been pursued earlier.