Court Rules USPTO Is Miscalculating Patent Term Adjustments

In a decision that could have wide implications for patent applicants, the U.S. District Court for the Eastern District of Virginia recently ruled that the U.S. Patent and Trademark Office has been miscalculating patent term adjustments (PTAs).

PTAs were first authorized in 1994 under the Uruguay Round Agreements Act. It required the term of a patent to be measured from the date of application, extended a patent term from 17 to 20 years, and created patent term adjustments, which extend the length of a patent term in the event that certain delays occur in the processing of the application. The American Inventors Protection Act of 1999 (AIPA) further amended the PTA provisions by providing for a Request for Continued Examination (RCE), which permits an applicant to request additional examination of the patent application.

The current case, Exelixis v. Kappos (Case No. 1:12cv96), involved the interpretation of 35 U.S.C. § 154(b), which guarantees that the examination and prosecution of a patent should not take longer than three years. In particular, 35 U.S.C. § 154(b)(1)(B) extends the patent term by one day for every day in excess of the three-year period. However, certain events, such as time consumed by an RCE or by an applicant requested delay, are “not included” in the measurement.

The specific question before the court in Exelixis was whether an applicant’s PTA should be reduced by the time attributable to an RCE, in the case where the RCE is filed after the expiration of the guaranteed three-year period. The District Court ultimately disagreed with the USPTO’s position that RCEs filed after the expiration of the three-year period should reduce the amount of PTA provided.

As explained in the opinion, “The plain and unambiguous language of subparagraph (B) requires that the time devoted to an RCE serves to toll the running of the three year clock, if the RCE is filed within the three year period; subparagraph (B) does not address RCE’s filed after the running of the three year period nor does it require that the time consumed by an RCE filed after the running of the three year clock be deducted from the PTA. Put simply, RCE’s have no impact on the PTA after the three year deadline has passed and subparagraph (B) clearly provides no basis for any RCE’s to reduce PTA.”


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