The USPTO has announced it will not seek further review of the Wyeth v. Kappos decision. In that case, the Federal Circuit held that the USPTO has been under-calculating the Patent Term Adjustment (PTA) owed to patentees based on USPTO prosecution delays. In its announcement, the USPTO indicated that is “preparing guidance for expediting requests for recalculation of patent term adjustments by the USPTO in light of the Wyeth decision.”
Although I have not completed the calculations, the patents perhaps most-likely to have some additional patent-term due to the Wyeth decision are those whose prosecution history include both (1) a pendency of more than three years from filing until either the patent issues or the applicant files an RCE and (2) a delay of more than 14–months from the application filing to the mailing of the first examination notification.* Prior to Wyeth, the PTO treated the beyond-three-year-issuance delay as overlapping with the the beyond-14–month-notification delay.
In a sample of 674 patents issued in the past year and filed after May 2000, I found that 479 (71%) both (1) had a pendency (smaller of filing-to-RCE and filing-to-Issuance) of greater than three years and also (2) had not received a qualifying notification with 14–months. Although I cannot say this with certainty yet, I believe that most of these newly issued patents deserve additional patent term under the Wyeth decision.
Note :*Notifications that qualify as first examination notifications include a Notice of Allowance, Final or Non-Final Rejection, Restriction Requirement, and an Ex Parte Quayle Action. Pre-examination notices such as a notice of omitted items or notice of incomplete application typically do not satisfy the PTO’s duty of meeting the 14–month deadline.
