Go Ahead and Check It: Failure to Expressly Request Early Commencement of National Stage Examination Causes Headaches

In Actelion Pharm, Ltd. v. Matal, No. 17-1238 (Fed. Cir. Feb. 6, 2018), the Federal Circuit affirmed the USPTO’s patent term adjustment determination regarding a dispute over when national stage examination commenced.

Typically, national stage examination of U.S. applications claiming priority to international PCT applications “commences” 30 months from the priority date of the international application. This commencement date is then used to calculate patent term adjustment if appropriate. An applicant may “commence” national stage examination at an earlier date, however, by making an “express request” under 35 U.S.C. § 371(f).^[1] To facilitate this request, the USPTO offers a form with a checkbox that states: “This is an express request to begin national examination procedures . . . .” 

Here, Actelion submitted the form, but it did not check the “express request” checkbox. Instead, it stated on that form that “Applicant earnestly solicits early examination and allowance of these claims.” The USPTO declined to accept Actelion’s statement as an express request to commence national stage examination and calculated patent term adjustment accordingly. Actelion sued the USPTO in the United States District Court for the Eastern District of Virginia. The district court granted summary judgment in favor of the USPTO, and Actelion appealed.

On appeal, the Federal Circuit held that, although the USPTO form is optional and there may be other ways to communicate a § 371(f) request, Actelion’s statement was insufficient to make its intentions clear, particularly because it did not reference § 371(f), the PCT, or the national stage.