Impact of Exelixis on Patent Term

By Dennis Crouch

I wanted to look a bit deeper into the impact of the recent decision in Exelixis, Inc. v. Kappos, Case No. 1:12cv96, 2012 U.S. Dist. LEXIS 157762 (E.D. Va. November 1, 2012).

The case stems from the patent term adjustment (PTA) provisions codified in 35 U.S.C. § 154(b). It is difficult to argue that 1952 Patent Act was well drafted. However, the rest of the Patent Act reads like a well edited prose as compared with Section 154(b). That section was added as part of the URAA (1994) and substantially amended with the AIPA (1999). The portion of Section 154(b) at issue in Exelixis is the three-year prosecution timeline guarantee found in 35 U.S.C. § 154(b)(1)(B). The provision generally (but with a few exceptions) provides one day of extra patent term for each day of pre-issuance prosecution pendency beyond the first three years, regardless of the cause of the extended pendency. One of the exceptions involve an applicant's filing of a request for continued examination (RCE). Under the prior PTO statutory interpretation, the filing of an RCE would cut-short any further 154(b)(1)(B) term adjustments. Exelixis rejects the PTO's analysis and holds instead that an RCE filing after the three-year date does not stop the PTA from running. The difference between these two calculations is shown in the generic application timeline shown below.

In its decision, the Exelixis court held that the change in interpretation mandated by the district court only impacts patents where a RCE filing occurred after the three-year mark. To get some quantitative sense of the change, I pulled up the file histories of the 5,200 utility patents issued in the first week of November 2012 (November 6, 2012).

Results: About 15% of patents in the group include a first-filed RCE following the three-year mark. Each of these patents would be eligible for at least some added patent term due to the Exelixis decision. As the table below shows, these patents already have an average PTA of 887 days. By my calculation, the Exelixis methodology would add an additional 452 days of patent term. As you might imagine, there is considerable variance amongst the affected patents.

Average PTA

Patents with first-RCE filed after three years of pendency

All Patents

Before Exelixis

887 days

450 days

Estimated After Exelixis

1,339 days

516 days

 

This change appears to be slightly less in overall magnitude, but additive to, the Federal Circuit's Wyeth v. Kappos decision from 2010. Importantly, in that case, the PTO did not begin using the new PTA calculation or offer guidance to patent applicants on the issue until after the Federal Circuit had confirmed the lower court decision.

21 thoughts on “Impact of Exelixis on Patent Term

  1. didn’t actually say

    Lol – I notice that you are not challenging my characterization (even as you “didn’t actually say”). Am I mischaracterizing your tendencies IANAE?

    have no self-awareness

    Lol again – what has “self-awareness” have to do with my honest and accurate capture of your tendencies? Or of my effective rebuttal of Leopold’s crrpy archery skills?

  2. But persistently wrong is no way to go through life son.

    Especially not if you go around picking fights on the internet about things people didn’t actually say. And if you have no self-awareness. Isn’t that right, anon?

  3. You were indeed wrong. And you compound it by being wrong about what you were wrong about.

    You are persistent, I will give you credit for that much. But persistently wrong is no way to go through life son.

  4. For you to suggest otherwise is either dishonest or dense.

    Actually you are wrong, as my post is neither dishonest nor dense. Quite the contrary, it is an accurate summation of the history of IANAE. Were you to recognize that IANAE is an acronym for (I) (A)m (N)ot (A)n (E)xaminer, you would have not (yet again) shot your feeble arrow off target.

    Don’t you tire of being wrong Leopold?

  5. Impressive substance.

    For the record, IANAE never said that he was “against a focus on making examination expedient” of “effective”; he merely disagreed that this case would incentivize the PTO. For you to suggest otherwise is either dishonest or dense. I know what my guess is.

  6. You’re doing that thing that you do, anon.

    LOL – so are you. In your case, and in particular at this post, that thing is QQ’ing. You seem to forget your attacks on others not engaged in threads (and in the case of Gene Quinn, not even ever on these boards).

    I was not even involved in this conversation until you brought me up, for no reason except to smear me.

    1) Truth is never a smear – sorry, but you have earned your reputation,

    2) Using you as an abject lesson of what not to do is always proper, whether or not you are in the thread is simply not material.

    For the record, you’re the last person here who should be playing the game of “accusing others of what you do

    For the record, I am not playing that game.

    You see MM, there is a sharp contrast between you and I.

    I post with substance and reason, often providing proper citations, and always having a colorable argument for any of my posts. You on the other hand, rely almost exclusively on insults and vacuous “feelings,” often based on nothing more than your desired “policy” of how you feel the law should be. My jibes at people are spot on accurate. Your attempts are clumsy misses, most often projecting your own faults onto others while you pretend not to have those very same faults.

    So please get a grip and focus on your precious “substance” (remember that?)

    Of course, I remember that – most all of my posts have that. But clearly there are those that post here that do not, and IANAE is one of those. I do enjoy trashing those who themselves attempt to trash others, especially when they have no real substance. The example here is perfect – his snideness is completely off target – much like – I would add – many of your posts.

    The takeaway is that if you don’t like being used as an example, clean up your game, bring some substance, and join the adult conversations more so than indulging in your insulting and vacuous agendas.

  7. MM’s accuse others playbook

    You’re doing that thing that you do, anon. Again. I asked you kindly this weekend to stop with the personal attacks and j-rk behavior. As before, I was not even involved in this conversation until you brought me up, for no reason except to smear me.

    For the record, you’re the last person here who should be playing the game of “accusing others of what you do”. After all, thanks to Dennis we now know that you spent years engaging in sockpuppetry here trying to create the impression that you were part of an imaginary majority of commenters with suspiciously identical obsessions. As part of your disruptive scheme, you employed sockpuppets on a near-daily basis to falsely accuse others of engaging in that very same abusive practice. You also denied doing this when confronted directly. But we all know the truth now. So please get a grip and focus on your precious “substance” (remember that?) instead of personally attacking commenters who are not even participating in the threads.

  8. “Nobody? I want it more than I wanted it before. This is a bad deal for the public and for innovators at large.”

    Maybe he should have been clear, this decision isn’t going to make anyone in charge of those examinations want it any more.

    Little people like yourself don’t really matter.

  9. “Naturally, I completely disagree. The antidote is obviously an expedient and solid examination.”

    There can be no more of an expedient or “solid” examination while the count system remains in effect, and this court decision isn’t going to change it, and it certainly isn’t going to make the PTO management change it.

    Just fyi. Ta rd.

  10. Taking a page out of MM’s accuse others playbook is not recommended – especially as that play does not work for others. Your mind is certainly not willing to understand. It’s amazing how quick you jump to try to defuse a focus on examination as any type of answer to any problem.

    I know you profess to not being an examiner, but what do you have against a focus on making examination expedient (I notice you still avoiding that discussion) as well as effective?

  11. If you cannot see the value of PTA in economic terms,

    Ladies and gentlemen, America’s answer to the “mind willing to understand”.

  12. If you cannot see the value of PTA in economic terms, you might really be confused why there was the lawsuit to begin with.

    I suggest you find another line of work if you still don’t get it.

  13. This is a bad deal for the public and for innovators at large.

    Of course it is. That’s the main problem I have with it too. But the public isn’t a party to the examination process, so this decision won’t effect any change that way.

    Whether it incentivizes the PTO is another question, of course.

    No, it’s the question, since anon said this “may actually force” PTO-side changes. If there’s no incentive that didn’t exist before, why should anything change?

  14. Obviously. But it always has been, and this case isn’t going to make anybody want it more than they wanted it before.

    Nobody? I want it more than I wanted it before. This is a bad deal for the public and for innovators at large.

    Whether it incentivizes the PTO is another question, of course. But one would hope that granted PTA is a metric that somebody over there is tracking.

  15. I love how you close your eyes and then say “I don’t see anything.”

    I love how you close your eyes and see things that aren’t there.

    Explain in objective economic terms why the PTO should care how much PTA it hands out to applicants. Because I’m not seeing it, and I’m not the only one.

  16. The antidote is obviously an expedient and solid examination.

    Obviously. But it always has been, and this case isn’t going to make anybody want it more than they wanted it before.

  17. I’ll think you’ll find it doesn’t cost the PTO anything to give out more PTA

    Lol. I love how you close your eyes and then say “I don’t see anything.

  18. Why would it do that? This case doesn’t incentivize anybody to focus on examination

    Naturally, I completely disagree. The antidote is obviously an expedient and solid examination.

    I note that you have abandoned the other thread and your ‘case’ there, just as I predict you will abandon any discussion on the merits here.

    Notwithstanding your withdrawal from the timeliness discussion, if the three year window is not met, there is no legal right of the Office to deny RCEs (with the provisio that such advance prosecution – let’s leave out the strawmen). The thing to do in the face of such legal moves by the applicant is to make the best case quickly. If a rejection cannot be reasonable,forcibly and clearly made, then an allowance would be in orde and that is better done quickly.

  19. the criticality of the three year guarantee may actually force the focus (finally) to be on examination.

    Why would it do that? This case doesn’t incentivize anybody to focus on examination. It incentivizes applicants to draw out the timeline of the first two actions without much regard to their substance, and I’ll think you’ll find it doesn’t cost the PTO anything to give out more PTA.

  20. Prof. Crouch, another point to keep in mind (as someone else noted over at PatentDocs), the reasoning of this decision will also affect all appeals initiated after the three year mark – win or lose.

    The fact that the backlog has been shuffled around (and generally each of new apps, RCEs and appeals queues growing at least up to recently), the criticality of the three year guarantee may actually force the focus (finally) to be on examination.

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