The new derivation proceedings enacted by the Leahy-Smith America Invents Act include one-year deadlines for instituting derivation proceedings, based on the publication or issue date of a relevant patent claim. To the extent that these deadlines were intended to mirror 35 USC § 135(b), they may include an unintended trap for the unwary based on the USPTO’s interpretation of similar language in the deadline for filing an application for Patent Term Extension under 35 USC § 156.
The Deadlines At Issue
The one year deadline of current 35 USC § 135(b) is reflected in this language:
(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.
On the other hand, the deadlines for the new derivation proceedings are set forth as:
For a USPTO derivation proceeding against a pending application (new 35 USC § 135(a)):
Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence.
For a district court proceeding against a granted patent (new 35 USC § 291):
An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.
The problematic language of the Patent Term Extension application deadline (35 USC § 156(d)(1)) reads:
(1) To obtain an extension of the term of a patent under this section, the owner of record of the patent or its agent shall submit an application to the Director. Except as provided in paragraph (5), such an application may only be submitted within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use.
The USPTO has interpreted the Patent Term Extension application deadline in such a way that the day that the product is approved is day 1, instead of counting the next day as day 1, because of the "beginning on the date" language. See PharmaPatentsBlog, "District Court Insists on Fairness In Patent Term Extension Application Deadline," discussing the applicable deadline when the FDA faxed an approval letter after 6:00 pm, which is directly addressed by other provisions the Leahy-Smith America Invents Act. The USPTO's interpretation has the effect of giving applicants 59 days from the approval date, rather than 60 days, when the time period is determined by traditional deadline calculation methodologies.
Don't Let The USPTO Set This Trap
Although the new derivation deadlines use "beginning on the date" language, the USPTO could provide a different interpretation of the deadline for USPTO derivation proceedings when it issues its implementing regulations. As noted above, the current version of 35 USC § 135(b) may support giving applicants a full year after publication of a relevant claim to file a petition to institute a derivation proceeding. Interested parties should voice their concerns to the USPTO as it develops implementing regulations, by submitting comments through the USPTO's patent reform implementation website.