Patent law in the United States provides a patent term adjustment (PTA) to compensate patent owners where there have been excessive patent office delays in prosecution of their patent applications.  One type of delay for which a PTA compensates is where the USPTO fails to issue a patent within three years of the filing of the patent application.  The USPTO calculates the number of days of accrued PTA and adds it to the basic patent term.

Where an examiner has issued a “final rejection” on an application, examination can be re-opened by submission of a Request for Continued Examination (RCE) and payment of a fee.  There is a provision which restricts PTA in respect of delay in issuing a patent where an RCE has been filed.  The patent office had interpreted this provision to mean that if more than three years had elapsed from the filing of the patent application, and a patent had not issued, the filing of RCE would stop any further accumulation of PTA.

In its decision in Exelixis, Inc. v. Kappos (No. 1:12cv96 (1 Nov. 2012)), the District Court for the Eastern District of Virginia has held that this interpretation was wrong, and that the filing of an RCE more than three years after the filing of the patent application does not stop the accumulation of PTA.

Owners of patents on which PTA has been undercalculated can seek correction of the PTA by filing a Request for Reconsideration and an associated fee with the USPTO within two (2) months from the date of issuance of the patent.  Correction can also be sought via a civil court action (which would be considerably more expensive).  Such an action must be commenced within 180 days of the issuance of the patent.

The finding in Exelixis has been applied by the District Court for the District of Columbia in Novartis AG v. Kappos (No.10-cv-1138 (15 Nov. 2012).  The decisions could be the subject of an appeal by the USPTO.