Patent Law

So, How (and When) Will You Get Your Patent Term Adjustment Corrected?

By Stephen Albainy-Jenei

As we saw in the Wyeth v. Dudas case, the US District Court for the District of Columbia overturned the USPTO’s interpretation of 35 USC § 154 (the statute that prescribes patent terms).

Section 154 grants extensions of patent terms for certain kinds of PTO delay.  However, Congress says you can?t double-dip, i.e., to the extent that periods of delay overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.

The DC Court disagreed with the USPTO “explanation” of the rules that applicant gets credit for “A delay” or for “B delay,” whichever is larger, but never A + B.

It seems that many patents that had been pending for more than three years before issuance should now be entitled to additional time under the PTA. But, Rule 1.705(d) limits the time an applicant may challenge the final USPTO-calculated PTA of a patent.

An applicant must petition the USPTO’s determination after the mailing date of the notice of allowance and before payment of the issue fee.  The final PTA determination, which is printed on the face of the patent, must be challenged within two months of the issue date

So, what does this mean for patents issued more than two months ago?

It would seem that the statute provides that an applicant must apply for reconsideration of the PTA no later than the payment of the issue fee, and may do so only once.

35 USC §154(b) sets out the requirements for patent term adjustment:

(B) Under the procedures established under subparagraph (A), the Director shall-

(i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination with the written notice of allowance of the application under section 151; and
(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.

If an applicant wants to appeal a patent term adjustment determination, then under the stature:

(A) An applicant dissatisfied with a determination made by the Director under paragraph (3) shall have remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent.

The 180-day time period to bring the action under the statute is absolute and cannot be petitioned.  Therefore, applicants would appear to need to appeal to the DC District Court under the Administrative Procedure Act within 180 days of issuance in order to have previous determinations set aside.

Generally, the district court has no jurisdiction to take an appeal unless the applicant perfected its administrative remedies before the USPTO, i.e., the applicant must have unsuccessfully petitioned for PTA correction from the USPTO under Rule 1.705(b), (c), and/or (d), but these wouldn’t seem to apply in this case.

So, what do you think? Will this require an act of Congress?

poll by twiigs.com

Full post as published by Patent Baristas on October 09, 2008 (boomark / email).