Recalculated Patent Term Adjustment Available
In view of the Federal Circuit's decision in Wyeth v. Kappos, Case No. 2009-1120 (Jan. 7, 2010), the U.S. Patent and Trademark Office ("PTO") has implemented an interim procedure for patentees to request a recalculation of a patent term adjustment under 35 U.S.C. § 154. In Wyeth, the Federal Circuit held that "overlap," for the purposes of § 154(B)(2)(A), does not occur unless the delay attributable to the ground(s) specified in § 154(B)(1)(A) ("A delay") occurs at the same time as the delay attributable to the grounds specified in § 154(B)(1)(B) ("B delay"). The A delay grounds relate to the PTO's delay in meeting examination deadlines, and the B delay begins when the PTO fails to issue a patent within 3 years of the actual filing date of the patent application. Thus, according to Wyeth, the potential for overlapping A delay and B delay can only begin after 3 years from the actual filing date.
In view of Wyeth, the PTO is modifying the computer program it uses to calculate patent term adjustments and such modification should be complete by March 2, 2010. In the meantime, patentees can request (without a fee) a patent term adjustment recalculation using a form issued by the PTO entitled, Request for Recalculation of Patent Term Adjustment in View of Wyeth. According to the PTO's interim procedure, a patentee may request a patent term adjustment if (1) the patent issued prior to March 2, 2010, (2) the sole basis for requesting reconsideration of the patent term adjustment is based on Wyeth, and (3) the request is filed within 180 days of the day the patent was granted. On or after March 2, 2010, a patentee who believes the patent term adjustment calculation for his/her patent is incorrect must file a request for reconsideration under 37 C.F.R. § 1.795(d) that complies with the requirements of 37 C.F.R. 1.705(b)(1) and (b)(2) within two months of the date the patent issued.
For more information, please click here.
