USPTO Calculations For Patent Term Adjustments Have Been Wrong

by Brian Fletcher on January 12, 2010

The U.S. Patent and Trademark Office (USPTO) has been erroneously calculating the periods of patent term adjustment for PTO delays in issuing patents, the U.S. Court of Appeals for the Federal Circuit held on January 7, 2010.  The court refused to accept the PTO’s interpretation of 35 U.S.C . 156(b)(1) for purposes of identifying “periods of delay” and “overlapping” periods of delay, pointing out that the statute contains no ambiguities that require deference.

The statute provides term adjustments for two types of delay:  (A) where the PTO fails to meet particular deadlines set out in the statute, one day for each day delayed; and (B) where USPTO fails to issue the patent within three years of filing, one day for each day beyond the three years.  Section 156(b)(2) states that the adjustment period shall not exceed the number of days issuance was delayed where delay types (A) and (B) overlap.

The Court held that the USPTO was erroneously calculating delay type (B) as beginning from the patent’s filing date.   According to Judge Randall Rader, the statute clearly requires that the period for a delay type (B) start three years after filing and end with the issuance of the patent, which results in a 756-day adjustment, not the 462-day adjustment found under the PTO’s interpretation.

The opinion in Wyeth v. Kappos, Fed. Cir., No. 2009-1120, 1/7/10, is available here.

According to a post on the USPTO’s web site, the U.S. Solicitor General will determine whether to seek further review of this decision.  Pending that determination, the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision.

The USPTO is reminding applicants and patent owners dissatisfied with a patent term adjustment determination by the agency to seek review of that determination within 180 days of patent issuance and the time periods set in the implementing regulations.  See 35 USC 154(b)(4) and 37 CFR 1.705.

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