IP Update, Vol. 8, No. 1 (13 January 2010)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

The Federal Circuit Rules That the USPTO Has Been Incorrectly Calculating Patent Term Adjustment ("PTA") in Certain Situations

On January 7, 2010 the Federal Circuit affirmed the lower court decision in Wyeth v. Kappos, No. 09-1120 (Fed Cir. Jan 7, 2010). In the decision, the Court ruled that the USPTO has incorrectly interpreted the statute and that in some situations where the pendency of the application exceeds three years, applicants may be entitled to an increased amount of PTA.

As explained in an earlier IP Update, Vol. 6 No. 3 (31 October 2008), 35 U.S.C. § 154 grants day-for-day PTA for failure to meet certain statutory deadlines: fourteen months for a first office action; four months to respond to a reply; four months to issue a patent after the fee is paid, the so-called "A delays". Additionally, term adjustment is granted for every day greater than three years after the filing date that it takes for the patent to issue, so-called "B delays". The USPTO incorrectly interpreted 35 U.S.C. § 154(b)(2)(A) as prohibiting double counting of "A" and "B" delays if the delays "overlap". The court ruled that generally, "A" and "B" delays should be added and that overlap of "A" and "B" delays cannot occur during the first three years of pendency since "B" delays do not start to accrue until three years after the application has been filed. The result of the Court's ruling is that applicants may be entitled to additional PTA in many situations when overall pendency exceeds three years.

It is expected that it will take the USPTO some time to make corrections to the software it uses to calculate PTA. Applicants may wish to consider whether the USPTO has correctly calculated PTA on new and recently issued patents and request recalculation if there is an error. If you wish BSKB to provide you with assistance in identifying applications affected by the decision and in requesting proper adjustment, if appropriate, please contact BSKB.

Return to top