An Opportunity for a Longer Patent Term . . the Wyeth Decision
by Drew R. Berweger and Peter I. Bernstein
On January 7, 2010 the Federal Circuit reached a decision regarding the proper calculation for Patent Term Adjustment (PTA) in Wyeth v. Kappos,
No. 2009-1120. This decision creates an opportunity for Applicants who have recently had a patent issue to petition the United States Patent and
Trademark Office (PTO) for additional patent term, without paying a fee to the PTO. Both the PTO and the Department of Justice have decided not
to seek further review of the Federal Circuit's decision.
The American Inventors Protection act of 1999, which amended 35 U.S.C. §154(b), promised patent Applicants a full Patent Term Adjustment for
any delay during prosecution caused by the Patent Office. This promise included three guarantees, two of which were at issue in the Wyeth decision.
The first, under 35 U.S.C. §154(b)(1)(A) is a guarantee of prompt PTO responses, the failure of which creates a so-called "A delay" with the patentee
being entitled to a one-day extension of patent term for every day greater than enumerated statutory limits. "A delay" is directed to delays where the
PTO fails to comply with certain deadlines, including fourteen months for a first office action or four months to respond to an Applicant's reply to an
office action. The second, under 35 U.S.C. §154(b)(1)(B) is a guarantee that an application will have no more than three years of pendency from
filing to issuance. Under the "B delay" the patentee is entitled to a one-day addition to the patent term for every day past the three year limit.
Prior to the Federal Circuit's decision, the PTO interpreted 35 U.S.C. §154(b)(1) to mean that an Applicant is entitled to the greater
of "A delay" or "B delay" to determine the proper Patent Term Adjustment, but that the two would not be combined. For example, pre-Wyeth,
if an Applicant was entitled to 20 days of "A delay" because it took the PTO 14 months and 20 days to issue a first office action and the
application issued three years and 20 days after filing, creating 20 days of "B delay," the application was only entitled to 20 total days of
adjustment. The Federal Circuit's decision in Wyeth reverses the PTO's interpretation and application of 35 U.S.C. §154(b)(1), holding
that Applicants are entitled to both "A delay" and "B delay" as long as they do not occur on the same calendar day.
Prior to Wyeth, if an Applicant wanted to challenge the amount of Patent Term Adjustment calculated by the PTO, the Applicant would
have to file a request for reconsideration of the patent term under 37 CFR 1.705(d) within two months of the date the patent issued.
Since the Wyeth decision, the PTO has created a temporary procedure for requesting a Patent Term re-adjustment under which a patentee
can seek a revised patent term, which would include both "A delay" and "B delay," without filing a request for reconsideration under 37
CFR 1.705(d) and without paying a fee. This procedure is temporary, is limited to eligible patents and is only available for alleged errors
in Patent Term calculation that are specifically identified in Wyeth. The PTO expects to complete the necessary software updates to their
system by March 2, 2010, so that all patents issuing after this date should have the correct amount of Patent Term Adjustment under the
Wyeth decision.
There are two scenarios where an issued patent will be eligible for this temporary procedure. The first scenario is when the patent was
issued prior to March 2, 2010 and makes a request within 180 days after the issue date. The second scenario is when an Applicant has
previously filed a request for reconsideration of Patent Term Adjustment under 37 CFR 1.705(d) before Wyeth and has recently received
a decision which was determined by pre-Wyeth methodology. Under this second scenario a request under the temporary procedure must
be filed within two months of the date of the decision for reconsideration of Patent Term Adjustment under 37 CFR 1.705(d).
Any pending requests for reconsideration under 37 CFR 1.705(d) will be given a patent term adjustment consistent with the Wyeth decision.
This temporary procedure may not be used to request a reconsideration of the Patent Term Adjustment as indicated in the Notice of Allowance
in an application that has not yet issued.
Now is a good time to use this temporary procedure to receive a potentially lengthy additional term of patent enforcement. Scully, Scott,
Murphy & Presser, P.C. can help you take advantage of this opportunity. If your U.S. patent has issued in recent months, you may wish
to contact us to determine if your patent is eligible for additional patent protection.
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