The United States Patent and Trademark Office (USPTO) announced on January 28, 2010 that it will provide patentees with the ability to request a recalculation of their patent term adjustment without a fee or petition as is normally required pending completion of necessary modifications to the USPTO’s computer program for calculating patent term adjustments. The agency expects to complete by March 2, 2010 the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit’s recent decision in Wyeth v. Kapppos regarding the overlapping delay provision of 35 USC 154(b)(2)(A). For more details about the decision, see our post here. Both the USPTO and the Department of Justice have decided not to seek further review of the Federal Circuit’s decision in Wyeth.
In the meantime, the USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date. This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth. A copy of the notice submitted to the Federal Register for publication and the form for patentees to use in requesting a recalculation of patent term is on the USPTO Web site here.
“The USPTO is working to modify its computer program to comply with the Federal Circuit’s decision as soon as possible,” said Commissioner for Patents Robert Stoll. “Until then, this interim procedure will enable patentees to request a recalculation quickly and at no charge.”
An applicant is entitled, subject to certain conditions and limitations, to patent term adjustment if (1) the USPTO fails to take certain actions during the examination and issue process within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; and (3) for delays due to interference, secrecy order, or successful appellate review.