USPTO To Begin Re Calculating Patent Term

The USPTO has posted a notice acknowledging the Federal Circuit’s decision in Wyeth v. Kappos and indicating that the Justice Department will now determine whether to seek an en banc rehearing or petition for certiorari. In the meantime, the PTO will change its PTA calculations to “conform with the Federal Circuit’s decision.”

On January 7, 2010, the Federal Circuit issued a decision in Wyeth v. Kappos, No. 2009-1120, regarding the calculation of patent term adjustments under 35 U.S.C. 154(b). The Federal Circuit’s decision rejects the USPTO’s interpretation of the “overlap” limitation in Section 154(b)(2)(A). The Solicitor General will determine whether to seek further review of this decision. Pending that determination, the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision.

Applicants and Patent Owners dissatisfied with a patent term adjustment determination by the agency are reminded of the requirement to seek review of that determination within 180 days of patent issuance and the time periods set in the implementing regulations. See 35 USC 154(b)(4) and 37 CFR 1.705.

Although not 100% clear, the statute appears to put the duty of calculating the the patent term adjustment exclusively in the hands of the USPTO. Thus, anyone claiming additional patent term under 154(b) may only do so based on a PTA “determination made by the Director.” That theory is bolstered by the statutory limitation of 180–days for filing a civil action based on dissatisfaction with the PTA determination.

Action Item: Anyone whose patent is about to issue or whose patent has issued in the last 180–days should quickly determine whether additional patent term is due. It is unlikely that the PTO will go-back and recalculate PTA for those cases. The PTO may also be willing to re-calculate the PTA for patents issued more than 180 days ago. There is also the potential that a court would disregard the 180–day limitation in this instance based on a doctrine such as equitable tollling.

Statistics: In a prior study, I found that over 75% of recently issued patents were awarded some patent term adjustment due to delays during the patent prosecution process. The Wyeth decision should not change the number of PTA eligible patents, but instead will tend to increase the PTA calculation value. For the period June-2008 to June-2009, I found that the average PTA calculation ranged from 9 to 12 months depending on whether the patent was examined by a primary examiner or assistant examiner respectively. [Link]

See also: PTA Strategies Presentation by Polk, Brinkerhoff, & Wegner; Don Zuhn at Patent Docs; Eric Guttag’s post on IPWatchdog; Sheri Qualters at NLJ;

21 thoughts on “USPTO To Begin Re Calculating Patent Term

  1. 21

    since this is obvious an mistake made by the government agency, the government agency should have the obligation and responsibility to fix it, rather than asking the applicant (the quasi-patentee) to involuntarily file a civil action against the PTO, which is time consuming and inconomic.

  2. 20

    Still Lurking, any patent that the company feels will have economic value that exceeds the cost of the fees would/should be concerned about PTA adjustments.

  3. 19

    Other than drug patents, what other “class” of patents would be concerned about PTA adjustments? I ask b/c this thread so far refers to the fees and deadlines for asking for adjustment, and I suspect drug companies at least are willing to pay those fees regardless due to the potential profits they make for every single day of additional patent term.

  4. 18

    Prior to this decision, the PTO had been dismissing petitions filed prior to issuance requesting B-delay time only as untimely filed. In some cases, such as when an RCE has been filed, the B-delay is fixed prior to issuance. So, even though B-delay “could have been raised” at time of issue fee payment, the PTO’s stance has remained that B-delay is unknown until issuance even if B-delay is fixed.

    I wouldn’t be surprised if the PTO changes their stance for cases with fixed B-delay once they start calculating B-delay in light of the Wyeth decisions.

  5. 17

    In response to JR –

    What about any B delay that has accrued up to the time of the N of Allowance? Is that an issue that “could have been raised” with a petition at the time the issue fee is paid?

  6. 16

    It is important that people understand that the 180 day period applies to the deadline for filing a civil action in the district court, and runs from the issue date of the patent. The deadline for filing a request for reconsideration with the PTO is (1) with the Issue Fee payment and (2) within two months of the issue date of the patent.

  7. 15

    TL is spot on. That is exactly what the PTO told me in 2009.

    To clarify: Applicants can only seek reconsideration of A delay up until paying the issue fee, and reconsideration of B delay (and therefore A+B delay) can ONLY be requested after issue notification, up until 2 months from the issue date. There is no possible way to determine B delay (or A+B) until an issue date is determined.

    This is why A delay must be dealt with prior to paying the issue fee (from 37 CFR 1.705(d):

    (d) […] Any request for reconsideration under this section that raises issues that were raised, or could have been raised, in an application for patent term adjustment under paragraph (b) of this section shall be dismissed as untimely as to those issues.

  8. 14

    There seems to be a procedural trap here because you cannot determine “B” delay until the patent has issued. If you spot an error on the issued patent, and you petition at the PTO for redress, your 180 day civil action clock is still ticking. What if the PTO doesn’t get back to you within 180 days?

  9. 13

    I would have thought that the appeal on PTA under 35 USC 154(b)(4) is a remedy available in case the PTO has miscalculated the PTA itself based on its established calculation rules. It should not be supposed to be a mean to appeal a PTA determination that has been miscalculated based on a wrong calculation rule. Since it is now established that the PTO had misinterpreted the calculation rules, isn’t there any other remedy for all those granted patents which have been granted for more than 180 days, and that may suffer a wrong PTA determination ?

  10. 12

    sounds like the PTO needs to clarify its procedures

  11. 11

    When I inquired with the PTO several years ago, I was told that the Office would not calculate ANY adjustment under 37 CFR 1.702(b) (failure to issue within thirty-six months) until after an issue date was determined (i.e., until well after the issue fee was paid), and that the PTA calculated for the Notice of Allowance did not include any adjustment under 37 CFR 1.702(b). (In fact, the Office official argued that it was impossible for the Office to calculate this adjustment until an issue date was determined.) This is also consistent with the way PAIR indicates patent term adjustments (no 36-month rule adjustment indicated until issue date determined).

    I was also told that adjustment attributable to the 36-month rule would be determined after payment of the issue fee and would be reflected on the issued patent (and would be a revision to the patent term adjustment indicated in the Notice of Allowance). Consequently, as the Office has refused to calculate the adjustment based on the 36-month rule at the time of the notice of allowance, and instead has only made this calculation just before issuance, it seems that one could argue that patents qualifying for additional term adjustment under the 36-month rule should indicate a revised patent term adjustment on the issued patent, and that requests for reconsideration should instead be governed by 37 CFR 1.705(d) in these cases.

  12. 10

    37 CFR 1.705(b) Any request for reconsideration of the patent term adjustment indicated in the notice of allowance, except as provided in paragraph (d) of this section, and any request for reinstatement of all or part of the term reduced pursuant to § 1.704(b) must be by way of an application for patent term adjustment. An application for patent term adjustment under this section must be filed no later than the payment of the issue fee but may not be filed earlier than the date of mailing of the notice of allowance.

  13. 9

    I think I recall language somewhere that if you pay the issue fee, you waive your right to question the PTA… I’m just sayin.

  14. 8

    “I would believe that the the Patentee filing under 35 U.S.C. 154(b)(4) would be required to have exhausted its administrative remedies”

    Is it possible that a court would find that pursuing the admin remedy was futile? The PTO was *not* going to grant those requests.

  15. 7

    I would believe that the the Patentee filing under 35 U.S.C. 154(b)(4) would be required to have exhausted its administrative remedies, namely filing under 37 C.F.R. 1.705 prior to taking action in the courts under 35 U.S.C. 154(b)(4). THus, those patentees and applicants who have paid the issue fee who did not file under 37 C.F.R. 1.705 would be foreclosed from the 180 day window identified by the USPTO.

    I would believe the USPTO is not going to consider adjustments generally to patents that have been granted or the issue fee paid within the last 180 days unless 1.705 was already performed by the applicant/patentee

  16. 6

    “Presumably, the 180 day period only applies to those applications with the issue fee paid or patents where the Applicant filed the request for adjustment prior to payment of hte issue fee.”

    You probably should have said:

    Presumably, the 180 day period only applies to those applications with the issue fee paid or patents where the Applicant filed the request for adjustment prior to payment of hte issue fee AND THE PTO DENIED THE ADJUSTMENT such that hte Applicant or Patentee has been wronged.

  17. 5

    To supplement my previous comment.

    The 180 day period comes from 35 USC 154(b)(4) indicating:


    (A) An applicant dissatisfied with a determination made by the Director under paragraph (3) shall have remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent. Chapter 7 of title 5 shall apply to such action.

    Presumably, the 180 day period only applies to those applications with the issue fee paid or patents where the Applicant filed the request for adjustment prior to payment of hte issue fee.

    Any one have any comments?

  18. 4

    Just sayin, that’s what I found in teh rules too.

    However, I disagree. The ‘best’ time to assess PTA is within a few months of the issue date once you know the actual date of issuance. Some of the PTA’s are based on that date, and I’ve had to correct the PTA to an unkown number because the PTO said something about PTA being until the notice of allowance or payment of the IF when in fact it should be until the date of issuance. It would be easier to just give them the number a few weeks after it’s all said and done.

  19. 3

    Where does the 180 day period find support in the rules? 1.705 has no 180 day provision

  20. 2

    the patent expiration date should be published on the patent

  21. 1

    According to the Office, after receiving the initial determination of the patent term adjustment (e.g. in the Notice of Allowance and Issue Fee Due), applicants have one opportunity to request reconsideration of the determination. Any request for reconsideration (an application for patent term adjustment) must be filed with or before payment of the issue fee.

    This is the best time to address the PTA issue and requires the Applicant to make their own calculation of what the term should be.

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