In Wyeth v. Kappos, the Federal Circuit held that the USPTO has been miscalculating the Patent Term Adjustment (PTA) owed to patentees due to delays in patent prosecution. The USPTO has now announced an interim procedure for requesting recalculation of patent term. According to the plan, the PTO will recalculate the patent term for free for any patent issued prior to March 2, 2010 so long as the request for reconsideration is submitted within 180 days of issue. (Patents Issued on August 4, 2009 will reach the 180 day mark on Sunday, January 31, 2010.) The requested recalculation may only be for the purpose of correcting the overlap-calculation discussed in Wyeth.
[T]he USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date. This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth. A copy of the notice submitted to the Federal Register for publication and the form for patentees to use in requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.
The USPTO created March 2, 2010 as a deadline because it expects to be correctly calculating PTA by that point. “The agency expects to complete by March 2, 2010, the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit's recent decision in Wyeth v. Kappos regarding the overlapping delay provision of 35 USC 154(b)(2)(A).” If my undertanding is correct, the PTO intends to continue to issue patents with the incorrect PTA calculation up until that point.
Although it would be wise to double-check the PTO’s calculations, the applicant is not required to make the calculation prior to requesting reconsideration. Rather, according to the PTO, “the request for reconsideration need only state that reconsideration is being requested in view of the Federal Circuit’s decision in Wyeth.”
Potential Statutory Violation: Although I applaud the USPTO’s patentee friendly approach I am not convinced that the PTO has the power to take this action. Notably, 35 USC 154(b)(3)(B)(ii) requires that the PTO “provide the applicant one opportunity to request reconsideration.” The subsequent procedure identified by statute is a civil action that must be filed in court within 180 days of the grant of the patent. For patents that have already issued, the PTO has already offered the one opportunity to request reconsideration (see 37 CFR 1.705) and this waiver of the rules is providing a second opportunity for reconsideration. The court that limited the PTO’s power in Tafas v. Dudas could also limit the agency’s power in this situation. Even if the PTO is acting unlawfully, a patent receiving additional patent term due to the unlawful behavior will still likely be valid and enforceable under Aristocrat.
Potential Loss of Right to a Civil Action: Applicants should also beware that the 180–day-from-issuance deadline for filing a civil action to correct the PTA has not been waived. This means that the applicant may have no recourse if the PTO’s recalculation decision arrives after that 180–day window.