For a limited time, patentees can utilize a special streamlined, no-fee procedure for requesting reconsideration of patent term adjustments in accordance with the Federal Circuit’s recent decision in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010).
On January 28, 2010, the US Patent and Trademark Office (USPTO) announced that it was temporarily waiving the more cumbersome reconsideration process and the accompanying $200 fee. For the time being, eligible patentees may request a Wyeth-based reconsideration simply by submitting USPTO form PTO/SB/131, which requires only identifying information regarding the patent, and which does not require the patentee to undertake an analysis justifying the additional patent term. After reviewing the request, the USPTO will inform the patentee if any adjustment was made to the patent term.
Recalculation requests must satisfy three criteria to be eligible for the process. First, they must be made within 180 days of issuance. Second, the patent must have issued prior to March 2, 2010 (when the PTO expects to have corrected the computer program it uses for calculating patent term extensions). Finally, the holding in Wyeth must be the only basis for reconsideration.
It is important to recognize that this special procedure does not toll the filing deadline for actions for District Court review of USPTO determinations. That deadline, which also is 180 days from patent issuance, remains in place. Any patentee that takes advantage of the streamlined reconsideration process should promptly file an action in the US District Court for the District of Columbia as well. Unless it does so, the patentee may have no recourse should the USPTO err in recalculating the adjustment.
Patent Term Adjustments and Wyeth
Whether a patent-term adjustment warrants correction based on Wyeth requires a reanalysis of the USPTO’s original patent term adjustment calculation in view of the patent’s prosecution history. The American Inventors Protection Act of 1999 entitles patent holders to extensions of their patent terms (normally 20 years from the date the patent application was filed) in order to compensate for any USPTO-caused delays. The law divides USPTO delays into three categories:
- “A Delays” are created when the USPTO fails to respond to an applicant’s filings within a specified time frame.
- “B Delays” accrue when the USPTO fails to issue a patent within three years of the filing date.
- “C Delays” are related to secrecy orders, interference proceedings and successful appellate reviews.
The total patent term adjustment, however, is not simply the total of the A, B and C Delays. First, the adjustment is reduced by any delays caused by the applicant. Second, each day of delay caused by the USPTO must be counted only once. Prior to Wyeth, the USPTO interpreted this to mean that A and C Delays overlapped by definition with B Delays. As a result, when calculating a patent term adjustment, the USPTO would use either the longer of A and C Delays or B Delays, and would never combined the two.
In Wyeth, the Federal Circuit sided with the patent-owners’ challenge to the USPTO’s approach. The court reasoned that an A Delay could “overlap” with a B Delay only after the B Delay began. Accordingly, the court held that only delays accruing three years after the application was filed overlap with B Delays. As a result, the correct patent term adjustment calculation is: A Delays + B Delays + C Delays – Overlap (i.e., A or C Delays occurring three years after filing) – Applicant Delays.
One of the patents at issue in Wyeth dramatically illustrates the potential import of this decision. During prosecution of the patent, there were 336 days of A Delays (106 of which occurred three years after filing), 827 days of B Delays and 335 days of applicant delay. Applying its approach, the USPTO calculated an adjustment of 492 days (i.e., 827 B Delays – 335 applicant delays). The Federal Circuit, however, held that the patentees were entitled to 722 days (i.e., 336 A Delays + 827 B Delays – 106 Overlap – 335 applicant delays).