On January 15, 2014, the Federal Circuit in Novartis v. Lee1 decided certain patents are entitled to additional patent term resulting from a new method for calculating “Type B” patent term adjustments (PTA). The decision addressed how the PTO calculates “Type B” PTA pursuant to 35 U.S.C. § 154(b)(1)(B). Notably for patentees, the Court disagreed with a portion of the PTO’s method for calculating this type of PTA. The change in the calculation, and the potential for additional patent term, results from the Federal Circuit’s conclusion that the time period between a notice of allowance and actual issuance of the patent should be included in any “Type B” PTA, even in cases where a Reqest for Continued Examination (RCE) was filed. Previously, in cases that included filing of an RCE, the PTO had not counted the days between notice of allowance and issuance as contributing to additional patent term extension.
Only patents that issued from a prosecution involving an RCE will be implicated by this decision. Among those patents, there are two subgroups. The first group includes those patents where some amount of “Type B” PTA was already awarded, but without including the post-notice of allowance time period. All of those cases will be entitled to some additional amount of “Type B” PTA. The second group includes those patents where the three-year period for “Type B” PTA was not reached. Under the new calculation method, it is possible that the time period between notice of allowance and issuance will be enough to exceed the three-year period. Where that happens, the patent will now be entitled to some amount of “Type B” PTA.
The amount of patent term to be gained is likely from a few weeks to several months, depending upon how quickly the issue fee was paid and how soon thereafter the PTO issued the patent. A petition asking the PTO to recalculate the PTA must be filed within seven months of the issue date (two months plus up to five months with payment of extension fees).2 The fee for filing the petition is $200, regardless of entity size.3 Those interested in filing a petition should not delay.
It remains to be seen whether Novartis will seek rehearing of the decision en banc, but the clock is ticking since the time period for doing so is only 45 days from the date of the decision. Novartis could also file for certiorari with the U.S. Supreme Court. If the Federal Circuit’s decision is reconsidered, the “Type B” PTA calculation could potentially become more complicated since Novartis would be appealing a rather complicated statutory interpretation question concerning when the filing of a RCE tolls the three-year period of “Type B” delay and when it does not. If Novartis takes no further action, that question will be left for Congress to consider by redrafting § 154(b).