IP Law Bulletin

In its January 2010 decision in Wyeth v. Kappos¹, the Federal Circuit found that the United States Patent and Trademark Office (USPTO) had been miscalculating Patent Term Adjustment (PTA) for many applications, especially those that were pending for more than three years. In response to this decision, the USPTO announced an interim procedure for requesting PTA recalculation and initiated an overhaul of the computer system used to calculate PTA. This article briefly summarizes the procedures that applicants and patentees can follow to ensure that they are granted the correct amount of PTA.

Patents Issued before March 2, 2010

Although the Wyeth decision was announced on January 7, 2010, the USPTO did not roll out the corrections to its computer program for calculating PTA until March 2, 2010. For all patents that issued prior to March 2, 2010, the USPTO’s recently developed interim procedure can be used to request a recalculation of PTA.

The interim procedure requires filing a simple one-page form (PTO/SB/131). No fee is required, however the form must be filed within 180 days of the issue date of the patent. Unfortunately, there is no straightforward way to request PTA recalculation for patents in which more than 180 days have elapsed since the issue date. Additionally, the interim procedure can only be used to request correction of Wyeth-type PTA errors. All other PTA errors must be addressed using traditional procedures.

Patents Issuing on or after March 2, 2010

For patents that issue on or after March 2, 2010, Wyeth-type PTA errors should no longer occur because the USPTO’s automated PTA calculations should now be consistent with Wyeth. If, however, a Wyeth-type PTA error does occur, the USPTO’s interim procedure cannot be used. Instead, a petition must be filed under 37 C.F.R. § 1.705, and the petition must be accompanied by the appropriate fee.

37 C.F.R. § 1.705 generally provides two different situations in which a petition for PTA recalculation can be filed. In one situation, § 1.705(b) provides a mechanism for requesting reconsideration of the PTA indicated in the notice of allowance. Petitions under § 1.705(b) must be filed no later than the date the issue fee is paid. In a second situation, § 1.705(d) provides a mechanism for requesting reconsideration of the PTA indicated on the issued patent. Petitions under § 1.705(d) must be filed within two months of the date that the patent issued, but will be dismissed as untimely if they raise issues that were raised, or that could have been raised, in a petition under § 1.705(b).

One example of a petition that could not have been raised under § 1.705(b) relates to the three-year pendency provision. The USPTO does not calculate and inform the applicant of the PTA based upon the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) in the notice of allowance because the USPTO must know the date the patent will issue to be able to calculate the PTA based upon this provision. Thus, reconsideration of the PTA indicated in the issued patent as it relates to the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) is not considered a matter that could have been raised in an application for PTA reconsideration under § 1.705(b)². A request for reconsideration of the PTA calculation based on the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) will therefore be considered timely under § 1.705(d) if filed within two months of the date the patent issued. In other words, even if there appears to be a Wyeth-type error in the PTA indicated in the notice of allowance, there is generally no need to file a petition before paying the issue fee. Instead, the PTA should be checked again when the patent ultimately issues to determine if the error is still present and thus if a § 1.705(d) petition is needed to correct the PTA.

¹ 591 F.3d 1364, 93 U.S.P.Q.2d 1257, Civ. Act. No. 2009-1120 (Fed. Cir. 2010).

² United States Patent and Trademark Office – Official Gazette, October 6, 2009, 1347 OG 49.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.