May 29, 2014
On May 15, 2014, the U. S. Patent and Trademark Office (USPTO) issued a notice relating to the calculation of patent term adjustment (PTA) for certain international applications filed under the Patent Cooperation Treaty. Fitch Even attorneys are reviewing clients’ patents that may be affected by this notice and, as appropriate, will notify the affected clients. The May 15 notice also addressed certain aspects of its patent term adjustment procedures that were altered by two recent Federal Circuit cases. For more information, or with questions relating to the patent term adjustment, please contact Fitch Even partner Nicholas T. Peters.
The USPTO’s May 15 notice first confirmed that the USPTO has been miscalculating available PTA for some patents issued from international patent applications. By law, the USPTO must accord PTA if the USPTO does not issue a first Office Action within 14 months from the filing date of the application. Originally, this 14-month term began, not necessarily on the national stage entry date, but on the date of completion of the national stage requirements. The AIA Technical Corrections Act, passed in 2013, provides that this 14-month period starts from the national stage entry date and not from the date of completion of the national stage requirements. These dates are often identical, but are not always so.
The USPTO acknowledged that it had not managed to update the software it uses to calculate PTA until May of 2014. To rectify the USPTO’s errors in PTA calculation, the USPTO is allowing the owners of patents issued January 14, 2013, through May 13, 2014, to request a recalculation of the PTA. Any requests for recalculation of PTA under this procedure must be filed no later than July 31, 2104. No fee is required. The procedure is applicable only to national stage applications, and is not applicable to bypass continuations of international applications, continuations of international applications that entered the national stage, or other types of applications.
The May 15 notice also advised that the USPTO will begin to consider petitions based on the recent decisions in Novartis AG v. Lee and Exelixis, Inc. v. Kappos. As explained in our earlier alerts on these cases here and here, the Federal Circuit held that the USPTO has been systematically undercalculating the term of certain patents in which the applicant filed a request for continued examination (RCE). Many patentees have filed petitions to recalculate PTA based on these decisions. The USPTO had been holding these petitions in abeyance, but, as stated in the May 15 notice, has now begun to act on these petitions. More specifically, where a petition has been timely filed, the USPTO will recalculate the available PTA “by hand” and then, after an opportunity to respond, will issue a certificate of correction reflecting the new PTA determination. Fitch Even recently received a favorable decision on one such petition filed on behalf of a Fitch Even client.
The USPTO indicates that it will not be able to correct its PTA software to account for the Novartis and Exelixis cases for some time. Therefore, as specified in our earlier alerts, those patentees concerned with maximizing patent term are encouraged to request review of issued patents under the Novartis and Exelixis decisions and, as appropriate, to challenge the PTA determination. Because not all Fitch Even clients are interested in the end-of-term life of their patents, Fitch Even will not necessarily advise those clients with potential additional Novartis/Exelixis PTA of the availability of such PTA. If you are a Fitch Even patent prosecution client and wish to discuss the availability of additional PTA, please contact the Fitch Even attorney with whom you work. We expect the USPTO to correct its software within the next 12 months.
Written by Fitch Even partner Nicholas T. Peters
Fitch Even IP Alert®