Recalculating Patent Term Adjustments

On January 26, 2010, the Director of the United States Patent and Trademark Office (USPTO), David J. Kappos, published notice of an interim procedure for patent owners to request recalculation of the patent term adjustment that is automatically made upon issuance of new patents. The notice was intended to provide patent owners with the opportunity to request recalculation of the patent term adjustment, based on the recent decision by the US Court of Appeals for the Federal Circuit in the case of Wyeth v. Kappos, (Fed. Cir. 2010, 10-1120).

The USPTO uses a computer program to calculate patent term adjustments at the time a patent is issued. The patent term adjustments are intended to increase the patent term by any period of delay during prosecution of the application, which is caused by the USPTO. Typical delays in prosecution that are caused by the Patent Office include delays in forwarding responses by the USPTO, delays due to patent interferences, secrecy orders and appeals (known as Type A delays), as well as any other delays by the USPTO that cause an application to be pending for more than three years (Type B delays). The calculated term adjustment is then reduced by the number of days prosecution was delayed by the patent applicant, thereby producing the total number of days applied to the patent term adjustment.

The statute provides that in cases where the Type A and Type B delays overlap by a number of days, each of the overlapping days are only counted as one day. However, the Patent Office was calculating the term adjustments based merely on the longer of the Type A or Type B delays. Wyeth asserted that the two types of delays should be considered to overlap only after three years of prosecution has passed, and therefore patent owners were being short-changed by the USPTO. The appellate court agreed with Wyeth.

In light of this decision, many patent owners are entitled to a longer patent term adjustment than that originally granted by the Patent Office. In order to bring the practice of calculating the delays in line with the Court's decision, the USPTO will begin using a new method for calculating patent term adjustments and the Director has provided the interim procedure for patent owners to request recalculation of their patent term adjustments, without incurring any fees for the recalculation.

To be eligible for the interim recalculation procedure, requests for patent term readjustment must be filed no later than 180 days after the patent has issued. Furthermore, the subject patent must have been issued before March 2, 2010. If you have a recently issued US patent, you should discuss this procedure with your patent counsel without delay.

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