Interim Procedure for Requesting a (Free) Patent Term Adjustment (PTA) Recalculation from the PTO

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 /media/docs/2010/01/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.

30 thoughts on “Interim Procedure for Requesting a (Free) Patent Term Adjustment (PTA) Recalculation from the PTO

  1. 30

    I mean, The pre-petition term extension was 147 days. According to the petition, the new term extension is … are you ready for this … 147 days. The petition did not result in any change to the original term extension.

    I will now be taking a typing course.

  2. 29

    I mean, In the granted Wyeth petition, the USPTO says it will be issuing a notice of correction to correct the original 147 term extension days to read 147 term extension days.

    Still,

    USPTO: 1; Patent Holders: 0

  3. 28

    I just received a reply to a Form 131 Petition in the Wyeth matter. The petition was granted!

    The per-petition term extension was 147 days. Per the petition, the new term extension is … are you ready for this … 147 days.

    So the Appellate Panel Confirms that PTO Is “miscalculated” delays, doesn’t mean that the USPTO “undercalculated” the days, at least per the USPTO.

    OK, I get it. The USPTO admits its calculation technique was not correct, but will stick to their guns that the outcome was correct.

    In the granted Wyeth petition, the USPTO says it will be issuing a notice of correction to correct the original 144 term extension days to read 144 term extension days.

    USPTO: 1; Patent Holders: 0

  4. 27

    “I realize the delays on appeal can be pretty long, but what part of PTO procedure requires you to file a continuation before appealing to the Federal Circuit?”

    1, For starters, at the time, an applicant was not required to appeal; it could file CONs.

    2, Suffice it to say that the hypo is an amalgam of several MOD software apps that were being prosecuted at a time when it was evident that PTP’s MOD “rule” had a good chance of being invalidated, at least to computer hardware-heavy method claims for real systems doing real stuff. As we know, the rule was successfully challenged by another applicant.

    3, Those of us on the receiving end of PTO’s MOD rule knew it was going down in flames at some point. Our job was to keep the apps alive so that, when the rule was trashed, the inventors could have Examiners review their apps on the merits. (That’s why they pay those fees, right?.) At the time, CONs were the way to do that; not to submarine, but just survive a “doctrine” designed to reduce work for the PTO.

    4, Indeed, do we not know that the PTO has a long history of molding the Rules and interpreting the law in cynical and self-serving ways?

    5, And what’s so great about the 20 year approach? Here in the US of A, the patent system worked very well but we changed it to “harmonize” with the goals of a bunch of Lifers at WIPO?

    6, Malcom, you’re correct in the sense nobody I know wants to spend years over the craziness of 154b. Welcome to the Gulag! One million pending cases and counting…

    7, I’ll wait for another shoe to drop. Such as “Dear Client, Pursuant to a new Treaty signed today in the 80th TRIPPS Round, we regret to inform that any patent issuing hence forth will have a one day term

  5. 26

    stuart If not, inventors have no rights, they merely are the beneficiaries of a “program”–like a farm subsidy–that Congress can terminate at any time.

    So either you have a right to PTA extension or you have no rights at all? That’s the argument? What if I was a farmer trying to get subsidized for growing hemp I kept getting refused? Do I have “no rights” under those circumstances? And then discriminating against hemp is found unlawful by the courts. If I don’t receive a special gift for the time lost trying to obtain subsidies, do I have “no rights”?

    Consider an app filed in 1985 for software rejected under 101 followed by a CON which is again rejected on the same ground and that cycle is repeated until the CAFC finally rules that ground (e. g., MOD) unlawful in 1998. Patent is then examined on the art and eventually issues in 2005 and expires the next day. (Or, if you wish, expires in 2010–a 5 year term.)

    Somehow I don’t see the courts and/or Congress rushing in to extend the life of this 20 year old software patent. It has less to do with “submarine patents” per se and more to do with software.

  6. 25

    Consider an app filed in 1985 for software rejected under 101 followed by a CON which is again rejected on the same ground and that cycle is repeated until the CAFC finally rules that ground (e. g., MOD) unlawful in 1998.

    I realize the delays on appeal can be pretty long, but what part of PTO procedure requires you to file a continuation before appealing to the Federal Circuit?

  7. 24

    Thanks Dennis, but 37 CFR 1.701 doesn’t extend to delays caused by PTO rejections created by erroneous interpretations of the law such as those involving MOD claims rejected incorrectly under 101.

    Here’s the relevant section of 171:
    “(3) Appellate review by the Board of Patent Appeals and Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability and if the patent is not subject to a terminal disclaimer due to the issuance of another patent claiming subject matter that is not patentably distinct from that under appellate review. If an application is remanded by a panel of the Board of Patent Appeals and Interferences and the remand is the last action by a panel of the Board of Patent Appeals and Interferences prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final decision in favor of the applicant under paragraph (c)(3) of this section. A remand by a panel of the Board of Patent Appeals and Interferences shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.”

    Consider an app filed in 1985 for software rejected under 101 followed by a CON which is again rejected on the same ground and that cycle is repeated until the CAFC finally rules that ground (e. g., MOD) unlawful in 1998. Patent is then examined on the art and eventually issues in 2005 and expires the next day. (Or, if you wish, expires in 2010–a 5 year term.)

    While this Hypo is not an actual case, it’s similar to several real apps. The point is there never is action by either the Board or by the court and thus no “remand”, yet the patent is DOA rather than having a 17 year term starting 2005–because the PTO kept rejecting on an unlawful 101 ground for 15 years and consumed the next 5 years to examine on the art.

    SO, while it may be the “PTA applies only to applications filed on or after May 28, 2000”. in the case above the last app was filed > 5-28-2000. Therefore the suggestion that “Applications filed prior to that may also be eligible for some term extension” under 37 CFR 1.701 doesn’t provide any relief for those outlined in the Hypo.

    Basically, the 154 amendments were designed to harmonize by establishing a 20 year term. However, the dislike of submaring tactics has led to an absurdly unfair outcome for applicants who battled the spurious 101 rejections for so many years.

    The ultimate question is whether applicants have a “property” right to their intellectual products within the meaning of the 5th Amendment. If not, inventors have no rights, they merely are the beneficiaries of a “program”–like a farm subsidy–that Congress can terminate at any time.

  8. 23

    Stuart – PTA applies only to applications filed on or after May 28, 2000. Applications filed prior to that may also be eligible for some term extension. This is outlined in 37 CFR 1.701.

    The USPTO has offered to recalculate the PTA for any patent that issue prior to March 2, 2010. However, the offer is clear that the request must be made within 180 days of issuance. Those rules are spelled-out in this notice: /media/docs/2010/01/pta_wyeth.pdf

  9. 22

    1. Dennis: What’s the source of the cutoff dates you have mentioned, i. e. that Wyeth applies only to patents issued on/before/after a certain date X and filed on/before/after a certain date Y?

    2. What about already issued patents? For example, a patent issued in 2007 as to which the PTO improperly miscalculated the PTA?

    3. The 19994/99 amendments converted 17 year from issue patents to 20 from filing and, adding injury to insult, arbitrarily provide the 20 yers dates back to the earliest application in the priority chain.

    For many–such as applications rejected for years on 101 grounds finally adjudicated to be unlawful, the innocent filing of CONs effectively early-terminates the patent.

    In that circumstance, what’s the remedy? File a PTA following the judicial determination even though the PTO decision was years before?

    I’m waiting for some deep-pocket outfit to challenge the amendments as not only unlawful as being ambiguous but as a
    “Taking”.

  10. 21

    “argue that the PTO is simply reading these friendly letters from patent agents, and then deciding to do a sua sponte PTA recalculation”

    I would argue that the PTO is doing a sua sponte calculation, but is asking for friendly help from applicants to identify the problematic applications.

  11. 20

    Does § 154(b)(3)(B)(ii) limit the PTO’s jurisdiction to receiving only one request for adjustment?

    That probably is the pertinent legal issue here.

    On the other hand, what if we argue that the PTO is simply reading these friendly letters from patent agents, and then deciding to do a sua sponte PTA recalculation on those patents based on facts they’re suddenly aware of?

  12. 19

    Whether “one” means “one and only one” or “at least one” —

    Here’s a classic case of Chevron deference — ambiguous statute, and (it seems we all agree) the agency’s interpretation is at least “reasonable.”

    The only attack that would get traction would be a jurisdictional one — agencies don’t get Chevron deference for their interpretations of their jurisdictional statutes. Does § 154(b)(3)(B)(ii) limit the PTO’s jurisdiction to receiving only one request for adjustment? I’ll leave that to a court.

  13. 18

    I do not believe the statement that “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” is necessarily correct. Aristocrat depended on lack of an “improper revival” defense. However, an improper patent term extension is made a defense under 35 USC 282(b).

  14. 17

    Regarding authority to act, I would approach this a little differently. The USPTO has the responsibility to act in accordance with the law. Now that Wyeth has been decided, the USPTO has a responsibility to follow the law as of the date of the Wyeth decision. By requiring a filing from the applicant, the USPTO is performing a sort of triage. However, it can be argued that the USPTO should redo its calculations without any request from the applicant.

  15. 16

    So what about cases that are not issued yet, but are in process?

    If I understand the rules correctly, if the issue fee has not been paid yet, we need to file applications under 1.705(b) before paying the issue fee. If the issue fee has already been paid, then there’s nothing we can do before issuance–we need to wait for the patent to issue and then file a request.

    Is this right?

  16. 14

    Dennis,

    Are you taking the position that 37 CFR 1.705 is ultra vires in view of 35 USC 154(b)(3)(B)(ii)? Because Rule 705 on its face allows for two requests for reconsideration. Compare 37 CFR 1.705(b) and (d).

  17. 13

    “The statute does not deal directly with the potential that the PTO Director might not make his determination until after the 180-days has expired.”

    The statute appears ambiguous as to whether you can file a civil action before the PTA decides your petition. It just says that “applicant dissatisfied with “a determination” can file a civil action.

  18. 12

    “This means that the applicant may have no recourse if the PTO’s recalculation decision arrives after that 180–day window.”

    I would be really shocked if the applicant has no recourse if the PTO delays its PTA calculation more than 180 days beyond the patent grant date, or more realistically, delays that determination sufficiently after the grant date to make recourse by civil action impossible or futile. If nothing else, the applicant should have some recourse to force the PTO (e.g., by a writ of mandamus) to make the PTA calculation sufficiently in advance of the close of the 180 day window. To say there is no recourse for a dilatory PTA could make this statute illusory; I doubt any court would agree to permit such “arbitrary and capricious” behavior by the PTO.

    [Crouch Reply: EG – I hope that you are correct. However, I would not risk my most valuable patents (if I had any) on that gamble. Notably, the form provided by the PTO reminds patentees “that to preserve the right to review in the United States District Court for the District of Columbia of the USPTO’s patent term adjustment determination, a patentee
    must ensure that he or she also takes the steps required under 35 U.S.C. 154(b)(3) and (b)(4) and 37 CFR 1.705 in a timely manner.” The cited-requirements include filing the civil action within 180 days of issue. Although that “reminder” is not law, it may go a long way in eliminating your suggested equitable right.]

  19. 10

    I think its hilarious that PatentlyO is acting as some kind of authority on patent law vis a vis this and many other issues. More specifically, it amazes me that there is a lengthy piece on PTA without reference to 37 C.F.R. 1.705.

    According to this rule, a request to revise the patent term can be filed prior to issue based on the term indicated in the notice of allowance.

    An inexperienced reader of this piece might think that the ONLY way to address errors in the PTA is to wait until the patent issues then take the action described above within the 180 day window.

    Rather, an erroneous PTA can be spotted and corrected quite smoothly before payment of the issue fee using the Application for Patent Term Adjustment provisions of Rule 705.

    [Crouch Replies: Thanks for this comment Preacher. I agree that the blog (and this post) is intended for patent practitioners who already have an understanding of patent law. I also agree that ordinarily, the best and cheapest way to fix PTA errors is to file for reconsideration prior to issuance. I have added a cite to Rule 705 in the text where it is appropriate. However, as I mention a couple of times in the post, this new procedure is directed at correcting PTA post-issuance.]

  20. 9

    Dear Professor Crouch: Wow. Thank you for these daily, (very) timely pieces – year after year. As days fill and blur with billable hours and distractions, your posts (and some of the posted comments) continue to cause me to feel as though there is a top-of-the-line research and best practices department in my local office (but just on the other –albeit “virtual” – side of my computer screen).

  21. 8

    sue the Office for actually following the law

    I’m sure it would be framed as “suing the office for not actually following the procedure”.

  22. 7

    “…sues the PTO for their apparent charity”

    Let’s see – sue the Office for actually following the law – who are you with Mike, the ACLU?

  23. 6

    35 USC 154(b)(4)(A) reads as follows: “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 statute indicates that the civil action can be filed at some point after the PTO makes its PTA determination but before the 180-day-after-issue deadline. The statute does not deal directly with the potential that the PTO Director might not make his determination until after the 180-days has expired. I just searched on Westlaw and did not find a case interpreting the 180-day limitation of Section 154(b)(4)(A). So, the question (if it comes up) will be one of first-impression.

  24. 5

    Regardless of whether or not this is proper, it seems to me that it would be foolish for someone not to take advantage of this (along with the suggestions from Mike for those patents still within the 180 day window).

    What a headache for firms with large patent prosecution practices. And what about firms that do not routinely verify the PTO’s calculation of PTA? Will this force them to start undertaking that task? And what happens if they go back to verify in order to take advantage of this offer from the USPTO and they find some other PTA error which does not fall under the Wyeth decision? Hmmmmm…

  25. 4

    Dennis,
    The PTO will soon be overwhelmed with these requests and will likely not be able to respond within 180 days, especially in cases already nearing the 180 day mark. So, in the case of someone who files their petition now, but does not hear back from the PTO within the 180 days:
    1) Do they lose their remedy to file in the District Court?
    2) Can they Petition the PTO and simultaneously file in District Court before receiving an answer from the PTO?
    Seems like you should file your civil action within the 180 days to make sure the court has jurisdiction under 154(b)(4), but I haven’t yet seen a case dismissing an action for lack of jurisdiction for filing beyond the 180 days. Have you?

    Separately, how long before someone, e.g., a generic pharma company, sues the PTO for their apparent charity under the statute?

  26. 3

    I look at it a different way. I do not believe the PTO is acting outside its authority based on the language of CFR 1.705(d). Rule 705(d) provides a means for correcting the PTA when the Office puts the wrong PTA on the patent.

    In this situation, the exception in the Rule that precludes a request for recalculation after a patent issues doesn’t apply because the Office only used the longer of the delays to calculate PTA originally. Thus, an applicant couldn’t argue (at least not successfully) for PTA covering both types of delays prior to issuance until the Wyeth decision. In other words, the Wyeth decision essentially allows a patent owner to raise a new issue regarding PTA.

    [Crouch Responds: Aaron, I think you are wrong here. The reconsideration opportunity is supposed to be used when the PTO gets the calculation wrong (as they have done here). The statute requires “one opportunity to request reconsideration,” and the patentees have allready had the opportunity to make such a request.]

  27. 2

    Richard Schafer, I suspect this is a question of administrative law. I didn’t take that class, so I can’t comment on how such statutes are interpreted.

    Beyond that, though, I think the intent is for patentees who have not yet requested PTA to use the interim procedure. In other words, patentees who did not use their one opportunity. The PTO has simply extended the time for which the one opportunity exists.

    For the patentees who filed their lawsuits, I suspect, the USPTO will simply settle the lawsuits.

  28. 1

    What makes you think the statute should be interpreted as limiting the PTO to granting only one opportunity to request reconsideration? It’s just as reasonable to interpret it to mean that the PTO must grant at least one opportunity, and is free to grant more than one opportunity should it so desire.

    [Crouch Responds: The statute states that the director shall “provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.” The “one opportunity” language has not been interpreted by a court, so we do not know whether it will be construed as a limit of “only one.” Certainly, the statute does not expressly give authority for the Director to provide “two opportunities to request reconsideration.” The point here being that the Director must find authority for this action somewhere.]

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