Viewing category: Patents
February 2, 2010
INTERIM PROCEDURE FOR REQUESTING PATENT TERM ADJUSTMENT RECALCULATION
In view of the recent decision in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan 7, 2010), the U.S. PTO is currently modifying the computer program which is used to calculate patent term adjustment. In the meantime, the U.S. PTO has announced an interim procedure for requesting recalculation of patent term adjustment to correct errors in the overlap-calculation as discussed in Wyeth. Please see our Notice of January 15, 2010 for a discussion of the Wyeth decision.
According to the interim procedure, the U.S. PTO will recalculate the patent term adjustment, without a fee, for (1) patents issued prior to March 2, 2010, (2) where the sole purpose for requesting reconsideration is correction of errors discussed in Wyeth, and (3) where the request for reconsideration is filed no later than 180 days after the patent has issued. (Patents issued on August 11, 2009 reach the 180 day mark on February 7, 2010.)
The form for filing a Request for Recalculation of Patent Term Adjustment in View of Wyeth (PTO/SB/131) is available on the U.S. PTO website at http://www.uspto.gov/forms/sb0131.pdf.
The interim procedure is intended as an alternative to the petition and fee required by 37 CFR 1.705(d). For patents issued after March 2, 2010, the U.S. PTO expects their calculation to be consistent with the Wyeth decision. Accordingly, patentees seeking revised patent term adjustment in patents issued on or after March 2, 2010 must file a Request for Reconsideration under 37 CFR 1.705(d), within two months of the date the patent issued.
Please let us know if you wish us to file requests in any of your patents.
Sincerely,
Wenderoth, Lind & Ponack, L.L.P.
January 15, 2010
FEDERAL CIRCUIT ISSUES PATENT TERM ADJUSTMENT RULING
In a recent decision from the Court of Appeals of the Federal Circuit (hereafter “Federal Circuit”), the Federal Circuit affirmed a District Court decision which held that the U.S. Patent and Trademark Office (“PTO”) has been incorrectly calculating patent term adjustment (PTA) for many patents. Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010).
35 U.S.C. § 154 provides that the term of a patent can be adjusted due to delays by the PTO. These PTO delays include a delay known as “A delay”, which refers to delays due to the PTO failing to respond to Applicant filings in a timely manner (e.g., failing to issue a first Office Action within 14 months of filing an application, and failing to issue a second Office Action or Notice of Allowance within four months of an applicant response), and a delay known as “B delay”, which refers to delays due to the PTO failing to issue a patent within three years of the actual filing date of the application.
To the extent that the “A delay” overlaps with the “B delay”, 35 U.S.C. § 154 includes an “overlap” provision that states: “To the extent that periods of delay … overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.”
Prior to the decision in Wyeth v. Kappos, the PTO had interpreted this “overlap” provision as meaning that any “A delay” which occurs during the first three years of prosecution would necessarily overlap with any “B delay” because the “A delay” would contribute to the “B delay” . Thus, the PTO has been calculating PTA by giving the applicant the longer of the “A delay” or “B delay”. In Wyeth v. Kappos, the Federal Circuit has rejected this interpretation of the “overlap” provision by the PTO, and has held that the applicant is entitled to both the “A delay” and the “B delay”, less the amount of time that these delays overlap (i.e., the amount of “A delay” which occurs more than three years after the filing date of the application).
In view of the Federal Circuit decision in Wyeth v. Kappos, the PTO has posted a Notice on their website indicating that it is in the process of changing the manner of calculating PTA to conform with the Federal Circuit’s decision. Thus, as soon as the PTO implements this change, issued patents going forward should include the correct PTA calculation.
Recommended Actions: For any recently allowed applications that have been pending for more than three years, and for any recently issued patents that issued from an application that was pending for more than three years, please consider reviewing the PTA calculation in order to determine whether the PTO’s incorrect interpretation of the “overlap” provision resulted in an incorrect PTA calculation. Regarding the three year pendency period, please note that the filing of a Request for Continued Examination (RCE) during prosecution of the application cuts off any additional patent term adjustment due to failure of the PTO to issue a patent within three years (i.e., “B delay”).
For recently allowed applications, a request for reconsideration of the PTA calculation should be filed prior to the payment of the issue fee. For recently issued patents, a request for reconsideration of the PTA calculation must be filed within two months of the issue date of the patent. Thus, for any recently allowed applications, and for any patents that have issued within the past two months, if you believe that the PTA calculation may be incorrect due to the PTO’s improper interpretation of the “overlap” provision, please consider filing a request for reconsideration of the PTA calculation.
Additionally, for any patents that have issued more than two months ago, please note that applicants may seek review of the PTA calculation by filing suit in the United States District Court for the District of Columbia within 180 days after the grant of the patent. For patents that have issued more than six months ago, it is currently unclear whether there will be any recourse for patents which have an incorrect PTA calculation due to the PTO’s improper interpretation of the “overlap” provision.
If you would like for us to review the PTA calculation for any of your recently allowed applications or recently issued patents, please let us know.
If you have any questions regarding this information, please do not hesitate to contact us.
April 4, 2008
USPTO Permanently Enjoined from Implementing the Continuation and Claims Rules
On April 1, 2008, the District Court for the Eastern District of Virginia issued an order permanently enjoining the USPTO from implementing rules which would have imposed limits on the number of continuation applications and the number of claims to which an applicant would be entitled.
The controversial rules would have limited applicants to 2 continuation applications and 1 RCE (the 2+1 Rule) and would have limited the number of claims to 5 independent claims and 25 total claims (the 5/25 Rule).
In determining that the rules were an unlawful extension of the USPTO’s rulemaking authority, the Court stated that the USPTO’s rulemaking authority does not extend to substantive rules, and because the rules are substantive in nature, that such rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.”
The rules were originally scheduled to go into effect on November 1, 2007, but were blocked shortly before the effective date by a temporary injunction issued by the court pending this latest decision.
By: Kenneth W. Fields
The controversial rules would have limited applicants to 2 continuation applications and 1 RCE (the 2+1 Rule) and would have limited the number of claims to 5 independent claims and 25 total claims (the 5/25 Rule).
In determining that the rules were an unlawful extension of the USPTO’s rulemaking authority, the Court stated that the USPTO’s rulemaking authority does not extend to substantive rules, and because the rules are substantive in nature, that such rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.”
The rules were originally scheduled to go into effect on November 1, 2007, but were blocked shortly before the effective date by a temporary injunction issued by the court pending this latest decision.
By: Kenneth W. Fields
