All Things Patent
Opportunities to Extend Patent Term Abound as another PTA Rule Bites the Dust
Earlier this month, the U.S. District Court for the Eastern District of Virginia struck down a significant Patent Term Adjustment (PTA) provision (37 C.F.R. §1.703(b)(1)) that limits the PTA granted to a patentee when a patent issues more than three years after the date of filing of its application. The court ruled that the USPTO’s method of calculating PTA was incorrect. In Exelixis v. Kappos (1:12-cv-00096-TSE), the court granted Exelixis’ motion for summary judgment, ruling that the USPTO’s method for calculating PTA under 35 U.S.C. §154(b)(1)(B) is contrary to the law. The court adopted Exelixis’ viewpoint that while the plain language of the statute tolls the B-delay when the applicant files a Request for Continued Examination (RCE) within the three-year pendency of the filing date of the application, the statute is silent about RCEs filed after the three year period. The USPTO’s rule tolls the B-delay regardless of when the RCE is filed. The court deemed the USPTO’s insertion of the word “then” into the reading of the statute to arrive at their rule was not construing the statute but rather was re-writing it, thus essentially punishing the applicant for filing an RCE.
Prompt Action on the Part of Patentees Required
To preserve the right to have their PTA calculation revisited, a patentee who has been granted a patent within the last 180 days should:
(1) examine the patent’s File History to determine if there were any RCEs filed and, if so,
(2) establish whether the first such RCE was filed more than three years after the application filing date, and the resulting B-delay that was left out of the PTA calculation.
If eligible, the patentee must file a civil lawsuit to have this correction to the PTA made. However, if the patent in question issued within the last two months then the patentee may file a petition with the USPTO to request a recalculation of the PTA instead of going to the district court.
What Is Next?
While the USPTO has six months within which to appeal the ruling to the Court of Appeals of the Federal Circuit, it is not clear if the district court’s decision will be overturned. The post-issuance period within which the PTA recalculation can be demanded is short, and changes in the PTA calculation brought about by litigation only apply to the specific patents listed in the lawsuit. Thus, patentees should proactively file petitions and lawsuits for eligible patents in the coming months in order to keep their cases alive through the USPTO’s appeal period and the prospective appellate process.
By one account, about 15% of patents issued in the first week of November 2012 were eligible for an additional term adjustment of 450 days, on average.[i]
MaxVal Can Help
We can audit your portfolio and identify patents that would be eligible for a PTA increase in view of Exelixis v. Kappos, and if so, calculate the potential increase in PTA. And, for eligible patents that have issued within the last two months, we can draft a petition for you to submit to the USPTO. Please contact us for further information. We can be reached at firstname.lastname@example.org or (650) 472 -0644.
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