Background

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 delay by the U.S. Patent and Trademark Office, USPTO, in the processing of a patent application, reduces the effective duration of the applicant's patent term after issue of the patent. This could result in the loss of many years in the effective term after patent issue.

To address such delays, U.S. patent law provides for "Patent Term Adjustment" (PTA), which is added to the statutory twenty-year patent term to account for delays in the patent examination process, and which provides a “Patent Term Guarantee”. The Patent Term Guarantee provides three main bases for adjusting the patent term:

  • ”A Delay”: accrual of time as a result of the USPTO not being able to meet time periods within which it has to take various actions. Principally, the first office action must be issued within 14 months from the filing date.
  • “B Delay”: accrual of time associated with the USPTO failing to meet the 3-year application pendency guarantee, from the filing date or from the date an international application enters the U.S. national phase.
  • “C Delay”: accrual of time associated with delays in derivation proceedings, secrecy orders and appeals.

The PTA awarded is the total of the A Delay, B Delay and C Delay, less any overlapping days and less any delays attributed to the patent applicant1.

American Invents Act (AIA) and AIA Technical Corrections Act

Changes to U.S. patent law were implemented in the America Invents Act (AIA), but these were found to have a number of deficiencies. Accordingly, on January 13, 2013, an AIA Technical Corrections Act2 was enacted, principally to effect numerous corrections to the AIA. This Corrections Act also includes corrections to the PTA provisions. It has taken the USPTO some time to draft rules to implement these corrections, and the final rules were only announced on May 15, 20143. The USPTO’s PTA calculator has been updated as of May 20, 2014 to reflect the changes.

Significant Update for PCT Applicants

The changes are significant, particularly for applicants of International (PCT) patent applications who have filed U.S. national phase entry applications. For these applicants, the 14-month period within which the USPTO must issue the first office action now commences on the national phase entry date. Previously, the period started on the date on which the application met all technical filing requirements, including submission of the Inventors’ Oath/Declaration. Therefore some patentees who filed in the U.S. through an international application, may be entitled to a longer PTA.

The USPTO experienced “significant delay” in updating its PTA calculator software to implement the new rules. As a result, it is providing an optional procedure to request a no-fee recalculation of PTA as an alternative to the normal petition and fee procedure required by the USPTO to reconsider a PTA determination.

To be eligible for the no-fee recalculation, patentees must meet the following conditions:

  • The patent was issued between January 14, 2013 and May 20, 2014;
  • The patent resulted directly from an international application that commenced the national phase under 35 U.S.C. §371;
  • Recalculation is based only on errors “identified in this final rule”.

The USPTO makes the distinction that the request for recalculation is not the same as a request for reconsideration, as the former is an alternative to the latter. Therefore, the USPTO will not refund fees already paid to initiate a request for reconsideration, even if the issues raised relate to the PTA statute amendments.

Additional PTA Entitlement in view of Novartis AG v. Lee

The Federal Circuit decision in Novartis AG v. Lee4 released on January 15, 2014 interprets the relevant rule for determining PTA for issued patents that involved a Request for Continued Examination (RCE) filing during the prosecution process.

Prior to this decision, the USPTO considered only the time between the application filing date and the date of the RCE to determine PTA with respect to the 3-year pendency guarantee (the B Delay). However, the court concluded that the USPTO must additionally consider the period between the Notice of Allowance and Issuance in its PTA determination. The consequence of this decision is that recently issued patents and patents pending issuance may receive additional time added to the PTA determination. Patentees should act quickly to take advantage of this ruling.

Please note, however, the May 15, 2014 announcement by the USPTO does not indicate whether this decision is reflected in the updated PTA calculator software. Furthermore, the USPTO has not updated its regulations to reflect this decision. Patentees seeking additional PTA in light of this decision should file an application for PTA reconsideration.

The recent PTA rule updates and Federal Circuit decision may change a patentee’s PTA entitlement significantly. Those who have patents granted recently should carefully review their PTA determinations made by the USPTO to confirm that changes to the PTA calculation rules are considered. Those wishing to obtain additional PTA entitlement should file an application for PTA reconsideration. For patents issued between January 14, 2013 and May 20, 2014, and filed as PCT national phase entry applications, there is a short period, until July 31, 2014, for requesting a no-fee PTA recalculation.