Patent Term Adjustment

We can take two valuable lessons from a recent decision of the Federal Circuit:

  1. Review all check boxes on forms when filing a U.S. patent application; and
  2. The United States Patent and Trademark Office is not to blame for deadlines falling on federal holidays.

On February 6, 2018, in Actelion v. Matal, the Federal Circuit affirmed the decision of the district court granting summary judgment in favor of the United States Patent and Trademark Office (PTO).  The dispute centered on the 40-day “A delay” patent term adjustment (PTA) awarded by the PTO to Actelion for U.S. Patent 8,658,675 (“the ‘675 patent”), entitled “Pyridin-4-yl Derivatives.”  Actelion asserted that it was entitled to 45 days of PTA, or alternatively, at least 41 days.

Continue Reading Patent Term Adjustment: Lessons Learned from the Federal Circuit Decision in <i>Actelion v. Matal</i>

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications.  While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this article addresses how the filing of various papers during prosecution can affect PTA.  In particular, Requests for Continued Examination (RCEs), terminal disclaimers, and information disclosure statements (IDSs) can all cause adverse PTA effects if not carefully considered.

General Overview

Typically, U.S. patent term is 20 years from the earliest effective filing date, regardless of how long it takes the United States Patent and Trademark Office (“USPTO”) to examine and issue the patent.  In an effort to minimize the possibility of shortened patent term, Congress created the system of PTA, codified at 35 U.S.C. § 154(b), that allows, in certain circumstances, the effective patent term to be extended past 20 years from an application’s earliest effective filing date.  But as with many rules, there are exceptions.

Continue Reading Calculating Patent Term Adjustment: Part 2

This article is first in a series focusing on various issues related to Patent Term Adjustment.  Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect patent term adjustment that will be examined in future articles.

Why PTA Exists

Under the pre-GATT regime, Patent Term Adjustment (“PTA”) did not exist in the U.S. because patent term was 17 years from issuance.  Consequently, any delay during examination, on the part of the United States Patent and Trademark Office (“USPTO”) or Applicants, was not a concern.  In fact, during this time, Applicants were in a way incentivized to, and sometimes would, delay examination to prolong their effective patent term, particularly since at the time publication of applications did not occur until issuance of the patent.  However, in 1995 GATT was adopted in an effort to harmonize U.S. patent term with the rest of the world, with patent term in the U.S. now being limited to 20 years from the earliest effective filing date.  As a result, any delays during examination would now erode a patent’s period of enforceability, which could cost Applicants millions of dollars or more.  Unfortunately, the onus was only on Applicants to avoid delays during examination, resulting in USPTO delays costing Applicants days or years of patent term without any recourse.  In an effort remedy this, Congress created PTA.

Continue Reading Calculating Patent Term Adjustment: Part 1

On January 9, 2015, the Federal Register published final rules implementing changes to patent term adjustment (PTA) in view of Novartis v. Lee, which the Federal Circuit decided last January.  The new rules affect patents where a request for continued examination (RCE) was filed during prosecution.  In general, the first new rule, effective January 9, 2015, provides that applicants are entitled to B-Delay between allowance and issuance, and the second new rule, effective March 10, 2015, creates a new type of applicant delay when an RCE is filed after allowance.

As previously discussed by Global IP Matters, Novartis focuses on B-Delay, which occurs, per 35 U.S.C. § 154(b)(1)(B), when the U.S. Patent and Trademark Office (USPTO) fails to issue a patent within three years of an application’s actual filing date.  Novartis held that the filing of an RCE tolls the running of the B-Delay clock whether or not the RCE was filed within three years of the application’s actual filing date.  Accordingly, the Federal Circuit concluded that once an RCE is filed, no B-Delay is available for any time in continued examination.  The Federal Circuit also held that, for cases where an RCE was filed during prosecution, applicants could be entitled to B-Delay for the time period between allowance and issuance.  The new rules reflect these holdings. Continue Reading RCEs and the New USPTO Patent Term Adjustment Rules