IP Update, Special Edition (23 February 2010)

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

USPTO's Interim Procedures for Request for Recalculation of Patent Term Adjustment

On January 28, 2010 the U.S. Patent and Trademark Office's (USPTO) Director, Mr. David J. Kappos, released a notice in response to the Federal Circuit's decision in the Wyeth v. Kappos appeal. The USPTO has decided not to appeal the Federal Circuit's decision and therefore will begin calculating Patent Term Adjustment (PTA) in accordance with the Court's interpretation of the overlapping delay provision of 35 U.S.C. 154(b)(2)(A). The USPTO has projected that they will complete the software modifications necessary for compliance with the decision by March 2, 2010. Once the software modifications have been made, the Notices of Allowance, Issue Notifications and Letters Patents will reflect the new calculation.

In the meantime, the USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date. Please note that the interim procedure can only be used for patents issued less than 180 days from the date of the request and only for alleged errors in calculation that are specifically identified in Wyeth. The procedure does not require a USPTO fee. The request also does not require a detailed analysis of the PTA for each individual case. We have included the link to the USPTO form (PTO/SB/131) for your review.

The USPTO is considering all requests regarding PTA on an expedited basis. Although the USPTO's interim procedures allow applicants to file the new Request for Recalculation up to 180 days from issuance of the patent, we strongly recommend filing the new form as soon as possible after the issue date. We are hopeful that the USPTO will act on these requests quickly and we can therefore receive a decision before the 180 day due date to file an appeal with the U.S. District Court.

Please note that unfortunately patentees do not have any recourse for patents that have been issued for more than 180 days because of the statutory requirement to appeal the USPTO calculation within that time period. Once the software modifications have been made the USPTO will only begin calculating the overlapping delay provision for cases going forward and not retroactively.

The official USPTO press release can be found here.

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