U.S. patents that issued recently may be entitled to additional patent term adjustment. On January 7, 2010, the Court of Appeals for the Federal Circuit ruled in Wyeth that the United States Patent and Trademark Office (USPTO) was incorrectly calculating patent term adjustments.1 Patent term adjustments include additional days of patent term, thereby lengthening the patent’s 20-year period of enforceability.
Patent term adjustments arise out of federal law that requires the USPTO to compensate for certain delays in issuing the patent.2 The Wyeth decision impacts the USPTO’s interpretation of the relationship between two of the three main subsections of the laws for calculating patent term adjustments of utility and plant patents.3 The first subsection addressed in Wyeth establishes “time clocks” for the USPTO to take certain procedural actions (“Section A”). For example, the USPTO must issue a first action on a new application within 14 months and “issue a patent within 4 months after the date on which the issue fee was paid ….”4
The second subsection (“Section B”) compensates the patentee if the patent application is pending more than three years, excluding certain enumerated procedural processes that delay prosecution.5 When calculating a patent term adjustment, any overlapping delays are counted only once.6
Before Wyeth, the USPTO would evaluate patent term adjustments for each newly issued patent under both Section A and Section B, and calculate the patent term adjustment as the greater of the two. However, in Wyeth, the Federal Circuit ruled that the USPTO was incorrectly applying the “overlap” provision of the law and, thus, under-calculating patent term adjustments for many patents by as much as 22 months.7
After Wyeth, the USPTO will be calculating patent term adjustments in a manner more favorable to all eligible patentees.8 Specifically, patent term adjustment should be calculated by the addition of Section A and Section B delays, less any overlapping periods—but only those overlapping periods that are after the first three years of prosecution—and less any applicant delay periods. As a result of this new calculation method, patents that have both Section A and Section B delays may be eligible for additional patent term. However, recently issued patents and currently allowed applications may not automatically benefit from the more favorable method of calculating patent term adjustment.
Accordingly, we recommend that all parties who are responsible for any recently issued patents or currently allowed patent applications consider whether the more favorable method of calculating patent term adjustments would benefit each of their cases. Otherwise, patentees may be sacrificing a portion of the patent term, allowing competitors and others to begin legally using and capitalizing on the patented invention earlier than they should.
Time is of the essence. There are statutory deadlines that limit the ability to take advantage of the more favorable method of calculating patent term adjustments. For example, if a patent issued more than 180 days ago, the statutory period has passed for contesting the calculation of that patent’s term.9
Even within the statutory deadline, each of the various procedural options to correct the patent term adjustment for a patent has its own deadline. In addition, the available procedural options differ depending on variables specific to each patent. For example, if a patent issued within 180 days, you may bring a civil suit against the USPTO and contest the patent term adjustment you were given.10 We recommend that, in determining whether to sue the USPTO for patent term, you balance the potential benefit of any additional patent term against the costs of bringing the suit.
Other options for correcting the patent term adjustment are only available within two months of issuance of the patent11 or before issuance of the allowed patent application.12 These other options are more cost effective and are conducted within the USPTO (and outside of federal court). But these options have shorter deadlines and other limitations.