The USPTO has announced it will not seek further review of the Wyeth v. Kappos decision. In that case, the Federal Circuit held that the USPTO has been under-calculating the Patent Term Adjustment (PTA) owed to patentees based on USPTO prosecution delays. In its announcement, the USPTO indicated that is “preparing guidance for expediting requests for recalculation of patent term adjustments by the USPTO in light of the Wyeth decision.”
Although I have not completed the calculations, the patents perhaps most-likely to have some additional patent-term due to the Wyeth decision are those whose prosecution history include both (1) a pendency of more than three years from filing until either the patent issues or the applicant files an RCE and (2) a delay of more than 14–months from the application filing to the mailing of the first examination notification.* Prior to Wyeth, the PTO treated the beyond-three-year-issuance delay as overlapping with the the beyond-14–month-notification delay.
In a sample of 674 patents issued in the past year and filed after May 2000, I found that 479 (71%) both (1) had a pendency (smaller of filing-to-RCE and filing-to-Issuance) of greater than three years and also (2) had not received a qualifying notification with 14–months. Although I cannot say this with certainty yet, I believe that most of these newly issued patents deserve additional patent term under the Wyeth decision.
Note :*Notifications that qualify as first examination notifications include a Notice of Allowance, Final or Non-Final Rejection, Restriction Requirement, and an Ex Parte Quayle Action. Pre-examination notices such as a notice of omitted items or notice of incomplete application typically do not satisfy the PTO’s duty of meeting the 14–month deadline.
This is good news. This will help improve fairness in the application process. And it might serve as an incentive to reduce inefficiency in the patent law office. All would agree that the USPTO is in dire need of such a kick in the pants.
Yes, making the Office responsible for fixing its own mistakes might send the wrong message. So much easier to make someone else do it – hey, at least the Office isn’t charging the applicant for it (and those damm lawyers shouldn’t charge the applicants either).
I agree that it should be the PTO’s duty to correct the mistakes, but that would be a pretty intensive undertaking. It makes sense for them to put it back on practitioners and patent holders, while giving a grace period where no fee is charged.
Diligent practitioners and patentees will be checking their portfolios to identify candidates for further extensiona, but isn’t is arguably the PTO’s duty to correct its own errors sua sponte without the necessity of a petition?
Dennis,
Can you drill down in your stats and see what the percentage is of those whose “A” delay is exactly equal in number of days to any “B” delay (both for the full smaple as well as for the subset that have “B” delays)?
Thank you.
That’s not inconsistent, Lionel. The PTO was getting it right for either >3 years OR >14 months to first action. They were getting it wrong when it was both.
I have been reading these overlapping comments and I have to say I am not sure the PTO was consistent prior to this decision, because I know I have had cases that issued in less than three years and I still received patent term extension.
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