Under 35 U.S.C. § 154(b), a patentee is entitled to patent term adjustments that combine the period of delay caused by the failure of the PTO in meeting certain examination deadlines, and by the period of delay caused by the PTO´s failure to issue a patent within three years after the actual filing date.

Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010)

In 1999, the American Inventors Protection Act amended Section 154(b) of the Patent Act to address the problem of delays in patent prosecution reducing the patent term. Amended Section 154(b) provided three guarantees of patent adjustment for delays during prosecution. The PTO interpreted the first two guarantees, which are referred to as the “A guarantee” and the “B guarantee,” as always overlapping and adjusted the patent by the greater of the A guarantee or the B guarantee but never combined the two guarantees. The patentees sued and argued that the terms of their patents were not properly adjusted due to the PTO´s interpretation. On summary judgment, the district court agreed with the patentees and ordered that the patents' adjustments be extended. The PTO appealed, and the Federal Circuit affirmed.

Reviewing the district court´s decision de novo, the court held that the statute was unambiguous. The PTO violates the A guarantee when it fails to meet an examination deadline. This violation continues until the PTO takes the appropriate prosecution response. Violations of the A guarantee can occur anytime during patent prosecution. On the other hand, the PTO only violates the B guarantee after the patent has been in prosecution for three years. The violation of the B guarantee continues until the application issues. The court recognized that the A and B guarantees could overlap but only after the patent had been in prosecution for three years. Thus, the court rejected the PTO´s interpretation that the B guarantee can occur anytime after the application is filed.

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