On January 7, 2010, the U.S. Court of Appeals for the Federal Circuit held that patentees, Wyeth and Elan Pharma International Ltd., were entitled to extended patent term adjustments (PTA) because the U.S. Patent and Trademark Office misinterpreted the statute 35 U.S.C. § 154(b), which provides for patent term adjustment (PTA) for certain USPTO delays. Wyeth v. Kappos, (see IP Update, Vol. 13, No. 1). Soon after, the USPTO announced it would not seek further review of the Federal Circuit decision but would instead change “the manner in which [it would] calculate patent term adjustments” under § 154. The revised program will calculate overlapping days consistent with Wyeth and is expected to be completed by March 2, 2010. For now, the USPTO is providing patentees of patents issuing prior to March 2, 2010 the opportunity to request recalculation of PTA and will waive the fee and petition required by 37 C.F.R. § 1.705(d).

To take advantage of this optional interim procedure, a patentee must meet the following criteria: the patent must be issued prior to March 2, 2010; the sole basis for requesting reconsideration of PTA must be the USPTO’s pre-Wyeth interpretation of 35 U.S.C. § 154(b)(2)(A); a Request for Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/131) must be submitted within 180 days of the day the patent was issued. The form is available on the USPTO website at http://www.uspto.gov/forms/index.jsp.

The interim procedure does not apply to patents issued on or after March 2, 2010, to requests that the USPTO recalculate the PTA for alleged errors other than those identified in Wyeth or to any request for reconsideration of PTA that is filed later than 180 days after the patent was granted. Additionally, the interim procedure is not a basis for requesting a refund of the required fee in 37 C.F.R. § 1.18(e) for any previously filed request under 37 C.F.R. § 1.705, including requests that were based on the USPTO’s pre-Wyeth interpretation of 35 U.S.C. § 154(b)(2)(A). Furthermore, should a patentee wish to preserve its right to review of the USPTO’s patent term adjustment determination in the U.S. District Court for the District of Columbia, it must also take the steps required under 35 U.S.C. § 154(b)(3) and (b)(4) (i.e., within 180 days after grant of the patent) and 37 C.F.R. § 1.705 (i.e., within two months of issuance of the patent).

For patents issuing on or after March 2, 2010, a patentee may file under 37 C.F.R. § 1.705(d) a request for reconsideration of PTA.

Practice Note: To avoid a potential loss of a right to a civil action seeking reviewing of the USPTO’s determination of PTA, patentees who file a request using the optional interim procedure should docket a reminder of the deadline under 35 U.S.C. § 154(b)(3) and (b)(4) (i.e., within 180 days after grant of the patent) in the event that the USPTO’s PTA decision arrives after the 180 day time period.