On Jan. 7, 2010, the U.S. Court of Appeals for the Federal
Circuit announced a decision that requires the U.S. Patent and
Trademark Office (USPTO) to calculate patent term adjustment (PTA)
in a manner that could allow additional protection term for many
U.S. patents. Wyeth v. Kappos, No. 2009-1120 (Fed. Cir.
Jan. 7, 2010). In September 2008, the U.S. District Court for the
District of Columbia held that the USPTO's methods of
calculating PTA were incorrect under the statutory requirements of
35 U.S.C. § 154. In its recent decision, the Federal Circuit
upheld the lower court's decision and determined that the
statute as written by Congress has been misinterpreted by the
USPTO. Accordingly, patentees may be entitled to an additional term
of protection for their issued patents.
The Patent Guarantee Act of 1999, codified at 35 U.S.C. §
154(b), and effective for utility patents issuing from applications
filed on or after May 29, 2000, provides three distinct means of
PTA, referred to as "delays":
- "A Delay": Guarantees extension of patent term due to the USPTO's failure to meet deadlines for examining a patent application (e.g. failure to issue a first office action within fourteen months, failure to respond to the Applicant's reply within four months, etc.). 35 U.S.C. § 154(b)(1)(A).
- "B Delay": Guarantees extension of patent term due to the USPTO's failure to issue a patent within three years of filing a patent application. 35 U.S.C. § 154(b)(1)(B).
- "C Delay": Guarantees extension of patent term due to the involvement of a patent application in an interference, a secrecy order, or a successful appeal. (35 U.S.C. § 154(b)(1)(C)).
However, the statute also provides that a patent's final PTA
is reduced by any "overlap" in the prescribed periods of
delay. Specifically, the statute provides that "the period of
any adjustment [cannot] exceed the actual number of days the
issuance of the patent was delayed." 35 U.S.C. §
154(b)(2)(A). Therefore, different periods of delay cannot be
"double-counted"; if a calendar day is included under
more than one period of delay, then it only accounts for one day of
PTA. The issue in Wyeth concerned when the periods of delay overlap
and how this determination affects the calculation of PTA.
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