@USPTO: *Wyeth* didn’t you calculate my patent term correctly?

by Daniel Davidson

These days it’s all about that little extra.  Why should it be any different when it comes to the United States Patent and Trademark Office?  It was recently decided in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010) that the USPTO’s calculation of the Patent Term Adjustments (PTA) took that little extra away from patentees.  The PTA is the amount of additional time allotted to a patent when certain deadlines are not met during the examination process.

The deadlines are laid out in two different subsections within Title 35 of the United State Code:  § 154(b)(1)(A) and § 154(b)(1)(B).  The deadlines included in §154 (b)(1)(A) include an issuance of an Office Action within 14 months of the date the patent application was filed, 4 months to respond to a reply, 4 months to act on an application after a decision by the Board of Patent Appeals and Interferences, and 4 months to issue a patent from the date the issue fee was paid.  Anything longer than that is an “A Delay.”  Pursuant to §154 (b)(1)(B), the USPTO must issue a patent within 3 years of the application of the patent (provided, of course, that the subject matter meets the other requirements for patentability).  Anything longer than that is a “B Delay,” according to the Wyeth Opinion.  Should any of these provisions occur, the patentee is entitled to an extension to the term of their patent until the provision is satisfied.

The confusion for the USPTO’s misinterpretation of the two subsections came from the word “overlap.”  Subsection 154 (b)(2)(A) provides that the extension can be limited.  “To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.”  Thus, if a delay occurred under “A” and “B” the USPTO was issuing a PTA according to whether the “A Delay” was greater or the “B Delay” was greater.  This, my friends, was incorrect according to the Federal Circuit.  In Wyeth, that Court held that a patentee was entitled to both the “A Delay” and the “B Delay.”  The “overlap” could only begin if any “A Delay” occurs after the three years since the patentee filed the application.  Therefore, if a patentee accumulated 60 days of “A Delay” and 30 days of “B Delays,” they receive the full 90 days of PTA, as long as the 60 days did not extend into the “B Delay” that begins after 3 years.  Clear as mud?

Now that we have this little clarification from the Federal Circuit, patent holders are able to apply for a revised Patent Term Adjustment, according to the new interpretation.  We thank you, Wyeth, for your fight, for our right, to a proper Patent Term Adjustment.  If you think your PTA was incorrectly calculated, please contact your patent attorney to see if Wyeth has affected your patent term.  If you would like to file a request for a recalculation of your PTA, the USPTO has provided a form for doing so.