05 February, 2010

USPTO too frugal with patent term adjustments

USPTO too frugal with patent term adjustments

A welcome recent decision of the U.S. Court of Appeals for the Federal Circuit has forced the U.S. Patent and Trademark Office (USPTO) to calculate patent term adjustments more favourably for owners of U.S. patents than was previously the case.

The term of a U.S. patent is typically 20 years from the filing date of a U.S. patent application; although for some older U.S. patents the term is 17 years from grant.  Long delays by the USPTO in processing a U.S. patent application could adversely affect patentee rights.  However, the term of a U.S. patent may be extended (adjusted) beyond the normal patent term to compensate patentees for delays by the USPTO in granting a patent.  Examples of relevant USPTO delays include failing to take certain actions within specified time frames, failing to grant a patent within three years of the filing date of a US patent application, and delays due to special procedures, such as secrecy orders, successful appeals, and interferences.

In Wyeth v Kappos (Fed. Cir. 2010), the USPTO's practice of calculating patent term extensions was found to be in error.  In circumstances where more than one relevant delay by the USPTO applied to a patent, the USPTO calculated the patent term adjustment to be the largest delay amongst multiple delays (e.g., larger of delay A or delay B).  However, this methodology was found to be improper.  Instead, the correct way to calculate the patent term adjustment is as a sum of multiple relevant delays less any periods of overlap (e.g., delay A + delay B - overlap).  By appealing against the USPTO's calculation decisions affecting two patents, Wyeth obtained patent term adjustments of 756 and 722 days, instead of the USPTO's less generously calculated adjustments of 462 and 492 days, respectively.  The USPTO's method of calculating patent term adjustments had incorrectly cut the patent terms by nearly one year.

The USPTO is currently modifying its computer systems for calculating patent term adjustments to comply with the court's decision in Wyeth.  The modified computer system for calculating term adjustments is expected to be operational on 2 March 2010.  Meanwhile, a patentee can request the USPTO free of charge to recalculate the patent term of a U.S. patent where a patent term adjustment of the type in the Wyeth case is involved, the patent issued before 02 March 2010, and less than 180 days have elapsed since the patent issued.

Author: Scott Berggren, Principal

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