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Patent term adjustment in the wake of Wyeth

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On Jan. 7, in Wyeth v. Kappos, the U.S. Court of Appeals for the Federal Circuit confirmed that the U.S. Patent Office (PTO) has been improperly shortening the lives of patents by miscalculating patent term adjustment (PTA). While the court resolved the issue of PTA calculations going forward, it did not indicate whether to compensate patent owners for patent terms miscalculated over the last 10 years.

A statute passed in 1999 offsets delays caused by the PTO in obtaining a patent. A patent's life is extended one day for each day of certain PTO delays. For example, for every day beyond 14 months taken by the PTO to act on a new patent application, or beyond four months to respond to a patent applicant for a pending application ("A time"), or beyond three years from the date a patent application is filed until a patent issues ("B time") a day will be added to the patent's life.

At issue in the Wyeth case is a provision to avoid "double counting" delays. The statute provides that: "to the extent that (A time and B time) overlap, the period of any adjustment ... shall not exceed the actual number of days that issuance of the patent was delayed."

The PTO interpreted the overlap clause to mean that the patent owner was entitled to the longer of A time or B time. Wyeth argued that PTA should equal the sum of A time plus B time, minus overlap of actual calendar days. The difference between the PTO and Wyeth calculations can be large, sometimes years and millions of dollars in value.

The Federal Circuit agreed with Wyeth, noting that the statutory "language is clear, unambiguous and intolerant of the PTO's suggested interpretation."

The PTA calculations can be disputed by: (1) filing a petition with the PTO before payment of the issue fee for A time or within two months of the issue date of a patent for B time and/or (2) filing a complaint with the Washington, D.C., District Court within 180 days of the issue date of a patent.

To date, the PTO has been dismissing petitions for PTA per the Wyeth calculation. At issue is whether patent owners are entitled to retroactive adjustments, and if so, whether they must have petitioned or filed a complaint for correction of the PTO's PTA calculation.

The statute indicates a final judgment resulting in a change to PTA will result in alteration of the patent term. Thus, patent owners that filed complaints will likely receive their requested adjustments in due course. The PTO is currently considering whether to retroactively recalculate the PTAs dating back to 1999.

Townsend attorneys are working with patent applicants and owners to determine whether PTO miscalculations justify petitions or court complaints to recapture patent term. Patent applicants and owners of patents issued within the last 180 days would be wise to speak with a patent attorney to do the same.

Submitted by Shane Hunter and Carol Johns, Ph.D., patent attorneys with Townsend and Townsend and Crew LLP

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