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Federal Circuit rules in the Exelixis Novartis cases that the USPTO has been partially miscalculating patent term adjustment

  • Workman Nydegger
  • -
  • USA
  • -
  • January 17 2014

In 1994, Congress changed the way that a patent's term is calculated. At that time, the term of a patent was changed from 17 years after the patent's

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District court invalidates USPTO interpretation of patent term adjustment RCE carve-out

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • November 5 2012

In a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia has found that the USPTO’s interpretation and application of the “RCE carve-out” provision of the Patent Term Adjustment (PTA) statute is contrary to law.

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The Patent Term Adjustment pendulum swings the other way

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • January 29 2013

On January 28, 2012, Judge Brinkema of the U.S. District Court for the Eastern District of Virginia issued a decision in a different Exelixis v

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A major change in patent term adjustment calculus: how a valuable tool in the patent prosecution process (RCEs) may now be even more valuable

  • Venable LLP
  • -
  • USA
  • -
  • November 16 2012

A recent U.S. District Court ruling will likely have far-reaching implications for determining Patent Term Adjustment.

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District court decision opens door to additional patent term adjustment

  • Morrison & Foerster LLP
  • -
  • USA
  • -
  • November 14 2012

In Exelixis, Inc. v. Kappos, a federal district court overturned the USPTO’s interpretation of the patent term adjustment (“PTA”) statute, finding that a Request for Continued Examination (“RCE”) filed after three years from the patent application filing date does not impact PTA.

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Federal Circuit modifies the method for calculating B-delay in Patent Term Adjustment

  • Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • -
  • USA
  • -
  • January 22 2014

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued on Jan. 15, 2014, its decision modifying the method for calculating Patent Term

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You may be entitled to additional patent term: recent developments in U.S. patent term adjustment

  • Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • -
  • USA
  • -
  • March 14 2013

The normally dry and arcane topic of patent term adjustment (PTA) has taken on new urgency and importance over the past several months as recent

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Exelixis revisited: conflict in determining patent term adjustment

  • Venable LLP
  • -
  • USA
  • -
  • January 28 2013

On January 28, 2013, the U.S. District Court for the Eastern District of Virginia issued a decision in Exelixis, Inc. v. Kappos (Case No

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Patent term adjustment update - Novartis v. Lee

  • Armstrong Teasdale LLP
  • -
  • USA
  • -
  • January 21 2014

A recent ruling by the Federal Circuit in Novartis AG v. Lee resolved the issues raised in the Exelixis I, Exelixis II and Novartis decisions

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Federal Circuit decision impacts Patent Term Adjustment calculation

  • Mintz Levin Cohn Ferris Glovsky and Popeo PC
  • -
  • USA
  • -
  • February 7 2014

Recently, the Federal Circuit issued a decision in Novartis v. Lee (2013-1160, Fed. Cir., Jan. 15, 2014) which alters Patent Term Adjustment (PTA)

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Recent rulings may increase available patent term

  • Dentons
  • -
  • USA
  • -
  • January 29 2014

On January 15, 2014, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision that changed the calculation of Patent Term

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Court's PTA decision could add term to affected patents

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • November 7 2012

On November 1, 2012, the U.S. District Court for the Eastern District of Virginia (Ellis, III, J.) interpreted the patent term adjustment (PTA) statute (35 U.S.C. 154) in a manner that could result in significant additional patent term for many U.S. patents.

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Recent developments in patent term adjustment practice

  • Squire Patton Boggs
  • -
  • USA
  • -
  • January 25 2013

The standard term of a patent is 20 years from the date the application is filed. Under the Patent Act, US patents are subject to adjustment to

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U.S. district court finds the USPTO is improperly calculating patent term adjustment

  • Neal Gerber & Eisenberg LLP
  • -
  • USA
  • -
  • November 20 2012

Patent Term Adjustment (PTA) extends the length of a U.S. patent’s term to compensate for certain delays by the U.S. Patent & Trademark Office (USPTO) during examination of the U.S. patent application.

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Patent term adjustment update - Exelixis v. Kappos

  • Armstrong Teasdale LLP
  • -
  • USA
  • -
  • November 16 2012

A recent ruling by the Eastern District of Virginia recently found that the United States Patent and Trademark Office (USPTO) had been incorrectly calculating a patent term adjustment statute concerning a Request for Continued Examination (RCE).

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District court sides with USPTO on patent term adjustment

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • January 15 2014

In Abraxis Bioscience, LLC v. Kappos, Civil Action No. 1:11-cv-00730., (D.D.C. Jan. 08, 2014), Judge Howell of the U.S. District Court for the

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Court ruling may lengthen term of many U.S. patents

  • Dechert LLP
  • -
  • USA
  • -
  • November 9 2012

In a major victory for patent holders, a federal court ruled on November 1 that the U.S. Patent and Trademark Office’s interpretation of the statute governing the term of a patent, which the Patent Office has implemented for the past decade, is wrong.

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Step right up and adjust your patent term: court finds improper PTO calculations

  • Haynes and Boone LLP
  • -
  • USA
  • -
  • November 14 2012

The U.S. Patent and Trademark Office (“PTO”) has been improperly calculating patent term adjustment (“PTA”) for some patents, specifically, in cases where prosecution of the underlying application involved the filing of a Request for Continued Examination (“RCE”) more than three years after the original filing.

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Challenging the USPTO’s patent term adjustment calculations for RCEs

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • June 5 2012

Recently several cases have been filed that challenge the USPTO’s Patent Term Adjustment (PTA) calculations in patents where an RCE has been filed.

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Court holds that USPTO rules limiting patent term adjustment awards when request for continued examination is filed are invalid

  • Edwards Wildman Palmer LLP
  • -
  • USA
  • -
  • November 12 2012

On November 1, 2012, the U.S. District Court for the Eastern District of Virginia held that Patent Term Adjustment (“PTA”) awards arising from the failure of the U.S. Patent and Trademark Office (“USPTO”) to grant a patent within three years of the patent application filing date are not necessarily curtailed by a Request for Continued Examination (“RCE”) filed more than three years after the filing date.

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IP report January 2013

  • Baker Botts LLP
  • -
  • USA
  • -
  • January 8 2013

Recent case law has impacted how the U.S. Patent and Trademark Office (PTO) calculates Patent Term Adjustment (PTA) and when an applicant or patentee can

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Court determines USPTO is undercalculating patent term adjustments

  • Morgan Lewis & Bockius LLP
  • -
  • USA
  • -
  • November 12 2012

District court’s decision could lead to a minimum of 17 years of post-issuance patent terms for most standard patents.

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Preserving your right to patent term adjustment: the Exelixis decision and lessons from Wyeth

  • Hunton & Williams LLP
  • -
  • USA
  • -
  • December 12 2012

The U.S. District Court for the Eastern District of Virginia recently overturned the United States Patent & Trademark Office (“USPTO”) interpretation of the patent term adjustment (“PTA”) statute in Exelixis, Inc. v. Kappos.

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Federal Circuit clarifies calculation of Patent Term Adjustment for applications with continued examination requests

  • Venable LLP
  • -
  • USA
  • -
  • January 31 2014

In a recent ruling, the Federal Circuit clarified the scope of available Patent Term Adjustment (PTA) resulting from the U.S. Patent and Trademark

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USPTO improperly shortening some patent terms

  • Thompson Hine LLP
  • -
  • USA
  • -
  • December 20 2012

On November 1, 2012, Judge Ellis of the Eastern District of Virginia issued a decision that affects the period of enforceability of thousands of United States patents.

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Maximizing Patent Term Adjustment under Exelixis

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • January 24 2013

A number of Patent Term Adjustment (PTA) cases have been filed in the U.S. District Court for the Eastern District of Virginia since the November 1

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Federal Circuit splits the baby in patent term adjustment decision

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • January 15 2014

The Federal Circuit issued its decision in the pending Patent Term Adjustment (PTA) appeals, resolving the issues raised in Exelixis I, Exelixis II

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Life sciences: 2013 legal developments you need to know about

  • Mayer Brown LLP
  • -
  • USA
  • -
  • February 11 2013

Under the Hart-Scott-Rodino (HSR) Act, when an acquisition meets certain monetary thresholds, the parties must submit a premerger notification form

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The expedited request for continued examination choosing the right strategy for fast-tracked prosecution

  • Morrison & Foerster LLP
  • -
  • USA
  • -
  • June 27 2012

The United States Patent and Trademark Office (USPTO) has announced new rules relating to the inclusion of Requests for Continued Examination (RCEs) into its Track I program for fee-based expedited examination.

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District court says USPTO miscalculates patent term adjustment

  • Sullivan & Worcester LLP
  • -
  • USA
  • -
  • November 12 2012

The law provides patent applicants an adjustment in patent term to compensate for USPTO delays during prosecution.

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New PTA calculations to extend PTA length for many new applications

  • Kilpatrick Townsend & Stockton LLP
  • -
  • USA
  • -
  • November 26 2012

On November 1, 2012, the Eastern District of Virginia addressed whether the United States Patent and Trademark Office (PTO) properly calculates “B time” Patent Term Adjustment (PTA) under 35 USC 154 in view of Requests for Continuing Examination (RCEs) filed past the statutory three years.

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Change in USPTO processing of RCEs likely to significantly delay prosecution

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • October 26 2009

On November 15, 2009, the USPTO will implement a critical revision to internal procedures that places newly filed requests for continued examination (RCEs) on an examiner's "special new" docket instead of hisher "amended" docket.

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Important notice regarding patent term adjustment

  • Reinhart Boerner Van Deuren SC
  • -
  • USA
  • -
  • December 13 2012

A U.S. District Court for the Eastern District of Virginia decision held that the United States Patent and Trademark Office (USPTO) has been incorrectly determining patent term adjustment (PTA) for some patents in which a Request for Continued Examination (RCE) was filed during prosecution of the application.

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A look at the USPTO's March 2011 statistics

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • April 22 2011

The latest post on "Director's Forum," the public blog of USPTO Director Kappos, is a guest post by Bob Stoll, the Commissioner for Patents, announcing the release of March 2011 data on the USPTO's Patents Dashboard.

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Congressman Goodlatte proposes patent reform to eliminate Section 145 actions and Exelixis I-type Patent Term Adjustment

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • June 3 2013

As reported on the House Judiciary Committee website, on May 23, 2013, Congressman Goodlatte (R-Va.) released "a discussion draft of legislation

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Novartis v. Lee: a new method for calculating U.S. patent term adjustment

  • Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • -
  • USA
  • -
  • February 10 2014

On January 15, 2014, the Federal Circuit issued its much-awaited decision in Novartis v. Lee, concerning the effect of a Request for Continued

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District Court denies equitable tolling, Fifth Amendment taking in Novartis patent term adjustment case

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • November 20 2012

In another significant Patent Term Adjustment (PTA) case decided last week (Novartis AG v. Kappos, Civ. Action No. 10-cv-1138 (Nov. 15, 2012)), the U.S. District Court for the District of Columbia found that Novartis could benefit from “ordinary tolling” but not “equitable tolling” in its efforts to obtain additional PTA for 23 patents.

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Patent alert: Federal Circuit decision on patent term adjustment

  • Fish & Richardson PC
  • -
  • USA
  • -
  • January 23 2014

On January 15, 2014, the Federal Circuit issued its long-awaited decision inNovartis v. Lee. The case considered the U.S. Patent and Trademark

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US Appeals Court decision impacts patent term

  • Squire Patton Boggs
  • -
  • USA
  • -
  • January 17 2014

On January 15, 2014 the US Court of Appeals for the Federal Circuit issued an opinion in Novartis v. Lee that will impact the term of many US patents

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District court holds filing of request for continued examination does not reduce patent term adjustment

  • Sterne Kessler Goldstein & Fox
  • -
  • USA
  • -
  • November 9 2012

On November 1, 2012, the District Court for the Eastern District of Virginia issued a decision in Exelixis v. Kappos (Case No. 1:12cv96), rejecting the U.S. Patent and Trademark Office’s (USPTO’s) interpretation of the statute which provides patentees with additional patent term to compensate for delays in prosecution caused by the USPTO.

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USPTO reshuffles the RCE deck

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • May 9 2013

The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more

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Court rules that USPTO is mis-calculating patent term adjustment

  • Fox Rothschild LLP
  • -
  • USA
  • -
  • November 12 2012

Owners of certain recently-granted 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.

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USPTO says status inquiry triggers patent term adjustment deduction

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • September 22 2011

Despite statistics on the USPTO's Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer.

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Federal Circuit creates opportunity for patent owners to increase patent term

  • Hunton & Williams LLP
  • -
  • USA
  • -
  • January 13 2010

Thousands of U.S. patents are likely to have been issued with improperly shortened patent terms, according to a recent decision by the U.S. Court of Appeals for the Federal Circuit.

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Novartis v. Lee: new math for calculating patent term adjustment

  • Baker & Hostetler LLP
  • -
  • USA
  • -
  • January 23 2014

Recently, in Novartis v. Lee (2013-1160, Fed. Cir., Jan. 15, 2014), the United States Court of Appeals for the Federal Circuit revised the method by

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USPTO finalizes Patent Term Adjustment rules and is accepting requests, at no-fee, to recalculate PTA

  • Bereskin & Parr LLP
  • -
  • USA
  • -
  • June 3 2014

The basic term of a utility or plant patent under current U.S. patent law is twenty years, calculated from the patent application filing date. Any

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USPTO proposes revised Patent Term Adjustment rules for RCEs under Novartis

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • June 18 2014

The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination

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Will challenges to the USPTO’s patent term adjustment RCE carve-out gain traction?

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • October 29 2012

In a complaint filed October 19, 2012, Biogen Idec MA Inc. joined patent holders such as Exelixis, Inc.and Human Genome Sciences, Inc., who are challenging the USPTO’s interpretation of 35 USC 154(b)(1)(B)(i)).

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Patent term adjustment for divisional patents

  • Foley & Lardner LLP
  • -
  • USA
  • -
  • July 16 2013

Most of the Patent Term Adjustment (PTA) cases being filed in the U.S. District Court for the Eastern District of Virginia involve patents issuing

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Court overturns reduction of patent term adjustment for patents with responses filed after weekends and federal holidays

  • Edwards Wildman Palmer LLP
  • -
  • USA
  • -
  • August 2 2011

On June 23, 2011, the U.S. District Court for District of Columbia overturned the U.S. Patent and Trademark Office’s (USPTO’s) award of patent term adjustment (PTA) and held that the USPTO’s reduction of the PTA award due to a response filed on the day after Veterans Day was erroneous.

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