The eastern district of virginia recently determined in exelixis, inc. Will patentees receive patent term adjustment after. The decision relates to how patent term adjustment is calculated when an applicant files a request for continued examination rce in a patent application. Patent term adjustment pta compensates a patentee for certain delays caused by the uspto during patent prosecution by adding more term to a patent according to 35 u. Preserving patent term adjustment theres no time to waste. When the uspto issued supernus its patent, it granted patent term adjustment of 1,260 days to account for delays in prosecution, but supernus argued that the patent term adjustment should have. A practical approach to calculate patent term adjustment. Lee, which the federal circuit decided last january. District court for the eastern district of virginia held that the u. Patent term adjustment pta and patent term extension pte. Ariad challenged that view before the pto but lost and, as a result, received no patent term adjustment. Examination time following termination of interference. Although it is less common, an rce can also be used to continue examination of a patent application after the uspto has issued a notice of allowance. Patent term adjustment pta is a process carried out by the u.
The terms of many recently issued and future patents will be impacted by the companion federal circuit decisions in novartis and exelixis. Federal circuit corrects uspto on reasonable efforts when. On january 9, 2015, the federal register published final rules implementing changes to patent term adjustment pta in view of novartis v. Supernus also filed a related international pct application on the same day it filed the 100 application in the u. Time following termination of interference after rce. Afterfinal practice governs a patent applicants options for continued prosecution upon receipt of a final office action. New changes in us patent term adjustment calculations after novartis v. For purposes of calculating patent term adjustment pta, a declaration of an interference is not tantamount to allowance, and the time period from termination of the interference to mailing of a notice of allowance is not included in pta if a request for continued examination rce was previously filed.
Federal circuit decisions result in minor adjustments to. Pta is extended 1 day for each day after the end of the 3year period until the patent is issued. Federal circuit makes important change in patent term adjustment determinations. A typical patent has a twentyyear term from the date that the patent is filed. This article is second in a series focusing on various issues related to patent term adjustment for u. Patent term adjustment pta is a process carried out by the united states patent and trademark office uspto that awards dayforday credits to the normal patent term based on delays in prosecution at the uspto. To print this article, all you need is to be registered or login on. This extension is known as a patent term adjustment pta. Additional patent term adjustment potentially available. On january 9, 2015, the united states patent and trademark office uspto published its final rules implementing changes to patent term adjustment pta, in. In an opinion issued on january 15, 2014 in novartis ag v. Several months of additional pta may now be added to a patent term if a request for continued examination rce was filed during.
Exelixis disagreed with the uspto and brought suit, contending that it was entitled to additional type b delay because the patent had not issued within three years of. Court identifies uspto error in patent term adjustment. The new rules affect patents where a request for continued examination rce was filed during prosecution. Calculating patent term adjustment pta an overview. If the pta had been calculated consistently during this entire period, we would now be seeing the lowest values during the entire year reporting period. The basic change is exemplified with the diagram above. Lee that a patent application does not earn b delay type patent term adjustment pta from the time an rce is filed until a notice of allowance is issued, but. Requesting reconsideration of the patent term adjustment to be indicated on the patent under 37 cfr 1.
A practical approach to calculate patent term adjustment pta patent term adjustment hereinafter pta is not rocketscience and to enable you with the prowess to dive into the deep understanding of statutory requirements for the pta without getting caught up with the trickiness of a legal draft, we provide a practical approach to explaining the fundamentals of pta in a most simplified and easytounderstand methodology. How appealing a patent application before filing an rce. Patent term adjustment in the postrce period foley. The bump in early 2010 is due to a change in interpretation of the law in the wyeth decision. Patent term extensions ptes provide a way for some patent owners. Patent term adjustment deductions important lessons silvia salvadori general in the recent decision supernus pharmaceuticals, inc. In the last few months, there have been important developments relating to patent term adjustment pta determinations by the u. For years, the usptos patent term adjustment pta computer program has been unable to properly calculate pta when an information disclosure statement ids had been filed with a 30day safe harbor statement under 37 c. In mayo foundation for medical education and research v. After mayo prevailed in the interference, the examiner issued a new rejection, mayo replied. History biological patents software patents list of patent law cases v t e. Prior to 1994, patent terms were seventeen years from the date the patent issued. The uspto has for many years interpreted the statute governing pta as immediately tolling the three year statutory period for the.
Kappos that the uspto has been miscalculating patent term adjustment pta in cases where a request for continued examination rce was filed after three or more years of pendency. In midseptember 2019, the court of appeals for the federal circuit cafc decided an appeal related to the calculation of patent term adjustment pta in a case involving afterfinal practice. If you continue browsing the site, you agree to the use of cookies on this website. Second, the statute specifically ties patent term adjustment reduction to the. Uspto issues procedure to request pta recalculation for. This case results in a minor shift in patent term adjustment pta for patents whose prosecution included an rce filing. For those who want to maximize the life of the patent and arent impatient in getting the grant, some strategies promote maximum patent term. However, between 1995 and 2000, patent office delays cost patentees years of patent term. Here, we discuss how appealing a patent application can promote patent term adjustment pta, even if the. District court decision in exelixis changes calculation of.
Uspto patent term adjustment error costs patent owners. A practical approach to calculate patent term adjustment pta patent term adjustment hereinafter pta is not rocketscience and to enable you with the prowess to dive into the deep understanding of statutory requirements for the pta without getting caught up with the trickiness of a legal draft, we provide a practical approach to explaining the fundamentals of pta in a most. In the united states, under current patent law, the term of patent, provided that maintenance. In some applications, after two rejections from the patent office, an rce needs to be filed in order to continue prosecution. During prosecution, mayo filed an rce and an interference over cited prior art. Patent term adjustment pta is a process carried out by the uspto that awards. If, at the end of this process, a patent issues, the patent term will last for twenty years from the date the initial patent application was filed. Court rules that uspto is miscalculating patent term adjustment posted on november 12, 2012 leave a comment owners of certain recentlygranted 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. If the united states patent and trademark office fails to examine a patent application in time deadlines for various steps are different, the patent term may be extended. District court decision opens door to additional patent term adjustment.
Extensions or other delay taken by the applicant can reduce or eliminate the extension. Supernus filed a request for continued examination rce with the pto, which ultimately led to the 897 patent. Gatt, patent term was limited to 20 years from filing, in part to harmonize us patent law with our trade partners. Similarly, the filing of an information disclosure statement after a request for continued examination rce but prior to a subsequent office action is deemed an.
Patent term adjustment in the postrce period 27 march 2015. If the issue fee is paid on the date that is three months after the mailing date of this notice and the patent issues on the tuesday before the date that is 28 weeks six and a half months after the mailing date of this notice, the term adjustment will be 1058 days. In theory, patent term adjustment calculations should be simple. Adelay extends the patent term by 1 day for each day after the end of the period specified in i, ii, iii, or iv, as the case may be, until the action described in the relevant clause is taken.
That part of the patent term adjustment statute provides an award of pta when the uspto fails to issue a patent. Patent and trademark office uspto that adds days to a patents lifespan based on delays that occur from the uspto during the patenting process. Filing an rce requires an additional fee, similar to the initial filing fee. In general, an applicant is entitled to patent term adjustment for pto delay beyond three years. Federal circuit makes important change in patent term. Usptos patent term adjustment policies reigned in yet again. Rces and the new uspto patent term adjustment rules mintz. In supernus, an ids was filed after an rce without the applicable safe.
Reduction of period of adjustment of patent term, jan. Iancu, the federal circuit held that the uspto wrongly imposed a patent term adjustment pta to the applicant for an information disclosures statement ids filed after a request for continued examination. While part 1 is a general overview of how to calculate patent term adjustment pta, this article addresses how the. The application issued as a patent on june 10, 2014. Cafc again considers pto calculation of patent term adjustment. To remedy this, congress created patent term adjustment in 2001, which, in part, awarded extra patent. Under the usptos rules, filing a request for continued examination rce stops that pta clock.
United states patent and trademark office final patent. Important new patent term adjustment decision allowing. Uptonow, the uspto has only looked at the prerce period when determining the amount of pta to award associated with the 3year examination guarantee. This extension is known as a patent term adjustment. Are you able to extend your patents term of enforcement. New changes in us patent term adjustment calculations. Patent and trademark office uspto has been incorrectly calculating patent term adjustments ptas for patent applications in which a request for continuation rce was first filed more than three years after the applications filing date. Patent prosecution has a bevy of procedural options for a wide range of preferences.
A request for continued examination rce under 35 u. Patent term adjustment deductions for applicant delay are. Patent term adjustments in the us are readjusted, again iam. The uspto accordingly refused to award any patent term adjustment to exelixis after the filing of the rce.
The chart below shows the average patent term adjustment for patents issued issued since 2005. Court of appeals for the federal circuit reversed a district. Most commonly, an rce is used to continue examination of a patent application after the uspto has issued a final rejection. In novartis versus lee, the federal circuit determined that the uspto had incorrectly interpreted the law as applied to applications in which a request for continued examination rce was filed. Court rules that uspto is miscalculating patent term. Recent developments relating to patent term adjustments.
Patent term adjustment pta and patent term extension pte compensate a patent applicant for delays that occur during patent prosecution. However, congress has provided for a generous patent term adjustment pta designed to add extra days to the patent term in order to compensate for lengthy prosecution periods. This appeal is focused on the pta guarantee of no more than 3year application pendency. Additional patent term adjustment potentially available for patents with ids maxval mar 05, 2019 additional patent term adjustment pta may be available for some cases where an information disclosure statement ids was filed after a reply. In june 2017 ariad, represented by wilmerhale, filed an administrative procedure act apa challenge to the ptos decision in the us district court for the eastern district of virginia. The applicant had filed an rce on 14th september 2011. An rce is a request for continued examination, which allows the applicant to continue to pursue a utility patent on an application for which the united states patent and trademark office has closed prosecution. On january 9, 2015, the united states patent and trademark office uspto published its final rules implementing changes to patent term adjustment pta, in view of the united states. Under the usptos rules, filing a request for continued examination rce stops that pta clock, but in ariad. Patent and trademark offices practice of deducting time from the patent term adjustment pta for applicant delays during periods of time when the applicants had no reasonable steps to take to advance prosecution.