PTAs were first authorized in 1994 under the Uruguay Round Agreements Act. It required the term of a patent to be measured from the date of application, extended a patent term from 17 to 20 years, and created patent term adjustments, which extend the length of a patent term in the event that certain delays occur in the processing of the application. The American Inventors Protection Act of 1999 (AIPA) further amended the PTA provisions by providing for a Request for Continued Examination (RCE), which permits an applicant to request additional examination of the patent application.

Basically, the patent term will be extended if the delay was the fault of the USPTO, and no days are added if the delay was due to the applicant.

Patent term adjustments can have a very direct impact on the bottom line.  If a patent is enforceable for a longer period of time, there are potential licensing revenues or market share that can be gained or lost.

In a decision that could have wide implications, the U.S. District Court for the Eastern District of Virginia ruled that the U.S. Patent and Trademark Office has been miscalculating patent term adjustments (PTAs).

The case, Exelixis v. Kappos, involved the interpretation of 35 U.S.C. § 154(b), which guarantees that the examination and prosecution of a patent should not take longer than three years. In particular, 35 U.S.C. § 154(b)(1)(B) extends the patent term by one day for every day in excess of the three-year period. However, certain events, such as time consumed by an RCE or by an applicant requested delay, are “not included” in the measurement.

The specific question before the court in Exelixis was whether an applicant’s PTA should be reduced by the time attributable to an RCE, in the case where the RCE is filed after the expiration of the guaranteed three-year period. The District Court ultimately disagreed with the USPTO’s position that RCEs filed after the expiration of the three-year period should reduce the amount of PTA provided.

As explained in the opinion, “The plain and unambiguous language of subparagraph (B) requires that the time devoted to an RCE serves to toll the running of the three year clock, if the RCE is filed within the three year period; subparagraph (B) does not address RCE’s filed after the running of the three year period nor does it require that the time consumed by an RCE filed after the running of the three year clock be deducted from the PTA. Put simply, RCE’s have no impact on the PTA after the three year deadline has passed and subparagraph (B) clearly provides no basis for any RCE’s to reduce PTA.”

The USPTO has appealed the decision. However, if upheld, many patent applicants may benefit from an extended patent term.

How Can I Help?

Although this case is not over, if you have a patent and you would like to know if the PTA was calculated correctly, or you know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

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