Court rules that USPTO is mis-calculating patent term adjustment

Owners of certain recently-granted patents may be able to extend the patent’s term in certain situations, according to a recent court ruling from the Eastern District of Virginia.

U.S. patent law allows for patent term adjustment (PTA), which extends a patent’s term beyond its typical 20 years if certain delays occurred during prosecution of the application.  Under the Patent Act’s PTA provisions and the USPTO regulations that implement them, a PTA will account for any days beyond three years that the patent application was pending before the USPTO, among other situations.   However, some or all of the available PTA can be lost if the applicant caused certain delays.  For example  if the applicant requests an extension of time to respond to a USPTO  action, PTA can be lost.

The new court decision, Exelixis v Kappos, involved a case where the USPTO limited PTA in a patent because the applicant filed a request for continued examination (RCE) while the patent was pending.

In the case, the patent holder filed an RCE more than three years after first filing the application.  The USPTO granted the patent holder PTA for the days between the three-year mark and filing of the RCE.  However, the USPTO refused to grant PTA to account for any days after the RCE was filed.  The patent holder filed suit, asserting that the USPTO’s action was contrary to law.

The court considered whether an RCE filed after the three-year pendency mark stops PTA for any days after the RCE was filed, and it found in favor of the patent holder.   Noting that the statute precludes PTA if an RCE is filed before the three-year period expires but says nothing about RCEs filed after the three-year period, the court stated that “the PTO in this case incorrectly treats an RCE as a punitive measure,” the court found that RCEs filed after the three-year period have no effect on PTA.

The court’s ruling is unlikely to immediately change the USPTO’s practice, as the USPTO is expected to appeal the decision to the Federal Circuit.  However, in the meantime patent holders who have been denied PTA adjustments under facts similar to this case may wish to file a similar suit to protect their rights to a longer patent term.

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