by Dennis Crouch
A patent’s legally effective term is calculated based upon its filing date. Delays in issuance would seemingly lead to a reduction of patent term. However, through a series of legislative initiatives, Congress created a system of Patent Term Adjustment to compensate patentees for delays in patent issuance. Most PTA is added based upon PTO failure to timely issue office actions (A Delays) or to issue the patent within three years of the filing date (B Delays). However, patents with the longest PTA are generally those associated with interference proceedings, secrecy orders or successful appeals (C Delays).
Today, most patents are awarded some patent term adjustment, but the numbers continue to drop as shown by the two charts below. The first chart shows the percentage of US utility patents issued with at least some PTA being awarded. The second chart shows the average PTA award of those patents with PTA. In the second chart the discrete jump followed Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010). In that case, the Federal Circuit held that the PTO had been misreading the statute and thus undercounting PTA.
In Actelion Pharm., Ltd. v. Matal (Fed. Cir. Feb. 6, 2018), the Federal circuit sided with the PTO in a patent term adjustment challenge holding that the PTA calculations beginning with a national-stage application were not triggered by the patentee’s statement that it “earnestly solicits early examination and allowance of these claims.” The problem was that “casual” request was buried within the remarks while the applicant failed to check the box on the form to expressly request.
In a separate recently decided PTA case, a district court has agreed with Ariad that its original RCE filing should only cut-off PTA accumulation since the PTO negligently failed to process the filing (instead sending a notice of abandonment) and then took three months to withdraw the abandonment. ARIAD Pharm., Inc. v. Matal, 1:17-CV-733, 2018 WL 339141, at *1 (E.D. Va. Jan. 5, 2018)
To my mind, the holding that “earnestly solicits early consideration” was not enough to constitute an express request for early national stage entry is perfectly sensible and wholly unobjectionable. I was a bit distressed, however, by the other holding in this case—viz. that if the national stage entry starts on a national holiday, then the A-delay clock does not start running until the next business day. That seems like a strained reading of the statute, and one rather at odds with the statutory purpose to make the applicant whole for the Office‘s delay.
When you are toting up the A-day delays, you just count days from the day that the clock starts until the day that the clock stops. You do not subtract weekends and holidays that occur during that interval. Why should you subtract weekends and holidays when they happen to occur on the front end of the clock, rather than the middle?
Ariad[‘s]… original RCE filing should only cut-off PTA accumulation…
This does not make any sense to me. “Only” as opposed to what else? Did you mean to write “not” instead of “only”?
Another thought;
A better deal with PTA would be to award the term extension at the front end rather than at the tail end.
It can be noted that pretty much ONLY Pharma benefits from a tail-end extension, and most innovative entities would derive more meaningful benefit from a front end adjustment.
Let’s see PTA be rewarded as a “push-back” of when the maintenance fees start accruing.
Not only would this be a carrot for innovators, it would be a stick for the Office and the notion that untimeliness carries little impact. As is, once the Office “has theirs” in the Quid Pro Quo by publishing early, there remains no real substantial incentive for the Office to meaningfully perform their end of the bargain.
Thanks for repeating what I’ve been saying for years.
You are welcome.
I was unaware that you had posited such, and had I been aware I would have provided the attribution.
Either way, it’s a worthwhile, simple, and simple to implement idea.
Which basically means it won’t gain traction in the captured Congress that we currently have.
Prof. Crouch, I do hope that the concept of Patent Term Adjustment is treated better in your courses (understanding that a single blog article may not be sufficient to show the entire context of the topic being discussed each and every time a topic comes up.
That being said, the context of why we even have such a thing seems a bit lacking here.
Should we discuss that context?
Hint: it includes the notion of Quid Pro Quo, and the fact that disclosure – publication – is essentially the Government grabbing their end of the bargain without giving their end of the deal.
Certainly, concerns with “submarining” were involved in some of the changes, but fundamentally here the “Gist” of the deal is that innovators choosing the patent path had a right to stop the process – and maintain Trade Secret status – if prosecution were not going the way they wanted it to.
Timeliness of Office replies was not some mere “nicety.” When the narrative leaves the implication that this is so, the narrative becomes part of the problem.
Timeliness was because the Office was going to publish the application, and the “guarantee” was exchanged for that publication (in what amounts to one of the earlier misnamed Acts of Congress – Joachim, an early sign of capture, by the way – that changed the Quid Pro Quo from publishing in exchange for grant to publishing for a mere “chance” at grant.
I am also aware that in certain situations, the act of publishing makes sense – for example, when the applicant herself decides to partake in other jurisdictions (that do NOT have the same Quid Pro Quo), and those other jurisdictions will be publishing, or have published. Such would indeed be the exception that should prove the rule for the fact that OUR Sovereign created a patent system with a different Quid Pro Quo.
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