More information on the Novartis v. Lee Change in Patent Term Adjustment

By Dennis Crouch

The outcome of the Novartis v. Lee case is that the vast majority of recently issued patents that include an RCE in the file history are due additional patent term adjustment (PTA). For most cases, the additional term adjustment will simply be the number of days between the notice of allowance and the issue date. I pulled up the file histories for about 1,000 patents issued in early 2014 in order to create the following histogram that shows the number of months between the Notice of Allowance and the Patent Issuance. The chart shows that the vast majority of cases issue within 3-4 months of the NOA — an average of 120 days.

The decision is unclear about how multiple NOAs will be treated. For the chart above, I used only the date of the final notice of allowance preceding patent issuance.

Under USPTO regulations recently, a request for reconsideration must be filed within two months after a patent is granted. 37 CFR § 1.705(b).

17 thoughts on “More information on the Novartis v. Lee Change in Patent Term Adjustment

  1. This data and the chart is useful. Anyway you could repeat the analysis give the histogram by week? What was the standard deviation on the 120 day mean? Thank you.

  2. I am still exploring the logic used by the judges and trying to find the right ‘implicit’ words…Since the time after examination is ended is not ‘examination time’ and the implicit meaning of the (admittedly) badly written law must control any reasonable interpretation, and the law was written to protect applicants from delays beyond the applicants’ control……would a court consider the delay created by the Office’s sending RCEs to a ‘special’ queue that languishes beyond a separate guarantee of responding within four month’s time as delay that is not ‘technically’ examination time (can you really call sitting in an Office controlled queue examination?)…?I think I see an implicit way out – penalize the government under a separate guarantee of lack of responsiveness, as clearly, sitting in such a queue is not something an applicant controls and is not meaningfully related to actual examination. Any other time (actually in examination) involved with an RCE can be removed from PTA. Such an implicit reading then preserves both the intent of the law to remove any applicant gaming AND removes any Office gaming that clearly can be seen from the Hyatt mess.Man, am I good or what?

      1. link to uspto.gov…Fourth paragraph, number one. (add: see also paragraph seven)Just as an applicant can be untimely (and be penalized for being untimely) so too should the Office be held accountable for not being timely.Or do you disagree with this premise Leopold?(and Kip – and others – may want to note the statement of “The American Inventors Protection Act of 1999 amended 35 U.S.C. § 154(b) to expand the list of administrative delays which may give rise to patent term adjustment.” which holds the background to the important Quid Pro Quo and publication concept largely [still] missing from the conversation)

        1. Relax, dude. I had forgotten about the 4-month time limit for responding to a response. Yes, I think there should be a time limit for responding to an RCE. I don’t think 35 USC 154 (b)(ii) actually covers that, though.

          1. You missed my notation of “implicitly” – hey, if the Supreme Court can find words ‘implicitly,’ why cannot any court?And you also seem to miss the fact that the Office is not being sought to be penalized for actually responding to an RCE – but rather it is the time involved in NOT responding (and thus, NOT actually being examined) that I am seeking to have the courts penalize the Office for – in full accord with a reasonable interpretation of the poorly written statute based on the logic presented in the immediate decision.You really need to learn how to be objective when the post begins with “anon.” Your ability to disengage any thinking when you respond to me is quite alarming.

            1. “You really need to learn how to be objective when the post begins with ‘anon.'”And you really need to learn to relax. I asked a simple question, which you answered, and then I answered your question. I don’t think anything I’ve said here deserves a series of insults.

                1. Besides being a stellar display of the maximum level of your wit, is this (yet another) test of how base of a reply Prof. Crouch will let stand on this blog?You realize of course Malcolm, that you already tried your ‘darling’ level of profanity before.Didn’t work out too well for you then either.C’est La Vie.

    1. “would a court consider the delay created by the Office’s sending RCEs to a ‘special’ queue that languishes beyond a separate guarantee of responding within four month’s time as delay that is not ‘technically’ examination time.anon,You seem to see 35 USC 154(b)(1)(A)(ii) like I do. For example, if your RCE (which is pursuant to 35 USC 132) includes a request that a previously unentered amendment (or an amendment provided with the RCE) be considered, that should trigger 35 USC 154(b)(1)(A)(ii) for requiring A period PTA if the USPTO delays its response to the RCE more than 4 months..

    1. I believe this comes from PTO rulemaking but can only find the interim final rule published in the Fed. Reg. 78 no. 62 on April 1, 2013, pp. 19416-19421–was a definitive final version of the rule ever published? (also note the online MPEP at the PTO site does not reflect the changes set forth in the interim final rule)

  3. NOA or receipt of the issue fee from the applicant? If I wait the full 90 days I get the same as if I pay right away?

    1. NOA. If the case has been pending at least three years, you can typically increase the amount of PTA by waiting to pay the issue fee.

        1. Not really. In these situations the length of the active patent term is more or less the same whether you pay the issue fee quickly or not. You just get a little bit of control over when that active term starts.

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