By Wendy Marsh
On November 8th, in Exelixis, Inc. v. Kappos, Judge Ellis of the United States District Court, Eastern District of Virginia, sided with the patentee, ruling that the U.S. Patent and Trademark Office (USPTO) has been undercalculating patent term adjustments (PTAs) to which applicants are entitled due to delays in examination that are the fault of the USPTO. 35 U.S.C. Section 154(b) controls PTAs by the USPTO, and 35 U.S.C. Section 154(b)(1)(B)(i) states as follows:
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY…..if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including –
(i) any time consumed by continued examination of the application requested by the application under section 132(b).
The USPTO had been interpreting this statute to mean that a Request for Continued Examination (RCE) ends the term adjustment for delay by the USPTO under subparagraph (B), regardless of when that RCE was filed.
Judge Ellis disagreed, stating that the plain and unambiguous language of subparagraph (B) requires that the time devoted to an RCE tolls the running of the three year clock only if the RCE is filed within the 3 year time period after filing. Put simply, the court held that RCEs have no impact on patent term adjustments if they are filed after the three year deadline has passed.
While this decision is bound to be appealed, in the meantime its impact on the terms of some patents could be significant. In the Exelixis case, the result of the judge's ruling was an additional 114 days of term added to the patent. Many other long-pending patents would likely receive equally large if not greater patent term adjustments. Patent owners may request a recalculation of the amount of their patent term extensions up to two months after a patent issues. For older patents, the patentee has up to six months to appeal the determination to the United State District Court, Eastern District of Virginia.