PTA Errors: How Hard to Fight

Patent

Many recently issued patents should receive a further extension of their patent terms based on the USPTO’s miscalculations of PTA and the Federal Circuit’s decision in Wyeth v. Kappos. To receive that those additional months of protection, however, the patent holder may have to file a civil action against the PTO. The question for patentees will be whether the expected value of those additional months at the end of the patent term (years from now) are worth the up-front expense of filing suit.

I am confident that most applicants will find it not worthwhile to go about the effort of seeking the additional PTA extension. As I wrote in 2009, most patents expire before the end of their alloted patent term because applicants fail to pay the maintenance fees. [Link] That said, more than 45% of patents are maintained in-force through the patent term.

In the next few days, we may see a few firms ramping-up as PTA specialists in a way that could reduce the cost of suing.

Links:

As a side-note, Irving Kayton’s company offers PTA Calculation for $200 per patent. (PatentTerm.Com).

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13 thoughts on “PTA Errors: How Hard to Fight”

  1. 13

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  2. 12

    Publius, we saw that as well after Wyeth. That’s why I’m saying that they may be willing to take PTA cases even though the admin remedies weren’t explicitly exhausted; they have forced a substantive change in the PTO position. Previously, petitioning was pointless because the PTO’s position was known. Now though, their position has been changed for them, so that essentially changes the circumstances faced by applicants. That’s what I’d argue anyway, but you’re still just at the dist’s mercy. The saving grace there though is that the dist knows that if you’re willing to file that suit, you’re probably willing to appeal it, so their equity considerations may be heightened.

  3. 11

    If anyone wants examples of why pursuing the administrative remedy would have been futile, I have received decisions on a few petitions under 37 CFR 1.705(d) that were denied because — wait for it — the Wyeth district court was wrong and the PTO was right about the proper method to use for calculating PTA.

    The PTO was never going to grant any such petitions, and were not even going to bother to wait for the Fed. Cir. opinion on the Wyeth appeal before deciding them.

  4. 10

    BJA, thank you for the comment. Were the other cases you reviewed under the APA or some other statute? I believe that the district court must dismiss the case if adminstrative remedies have not been exhausted and a statute or regulation requires such exhaustion as a prerequisite to judicial recourse. Also, I believe that the district court has discretion to dismiss the case in some other instances for failure to exhaust adminstrative remedies.

    However, I read (quickly, and perhaps incorrectly) the Supreme Court decision in Darby as stating that the district court cannot dismiss an APA case for failure to exhaust administrative remedies unless the statute or regulations governing the cause of action explicitly require such exhaustion.

    I just now realized (did not look until I finished the last sentence) that Wikipedia says the same thing–Darby states that court cannot dismiss for failure to exhaust administrative remedies unless statute or regulations so state. (I am glad that my analysis is up to Wikipedia’s high standards.)

  5. 9

    TL, in other cases we reviewed for errors correctable/appealable by petition, the DIST found that they had not properly presented the issue since they had not exhausted admin remedies. I don’t remember the case. But the result was that since they had exhuasted admin remedy, and the time in teh regs for admin remedy had now passed, they had completely lost those rights.

    However, with the outcome being settled or so it seemed under current law, they may take a different position regarding these specific circumstances. Won’t know until someone tries.

  6. 8

    EARF and BJA:

    I am not a litigator, but couldn’t one argue that neither 35 USC 154 nor 37 CFR 1.705 mandates exhaustion of adminstrative remedies before appeal to the district court and, thus, that under 5 U.S.C. 704 the agency action (even without request for rehearing) is final for purposes of appellate review? Further, upon a brief review of DARBY v. CISNEROS, 509 U.S. 137 (1993), it appears that the district court would not have discretion to require any further exhaustion beyond that required (or not required) by the statute or regulations.

    I have not reviewed the statutes or case law in depth, and everything above may be completely incorrect (in which case I would appreciate correction).

  7. 7

    EARF

    that was our analysis as well. However, you won’t know if the courts will let you until someone tries it.

  8. 6

    Can someone please clarify whether or not a patentee had to exhaust all administrative remedies, i.e. under 1.705 before they have the right to file suit in Federal Court? If so, I think that most poeople are missing the issue. Very few if any recently issued patents (I am ignoring pending applications at this point)would qualify.

    I cannot believe that you can directly appeal PTA without previously following the guidelines of 1.705 via the USPTO first and then receiving a negative determination on your request for correction.

    No where has anything indicated that this change in the law was retroactive such that patentee’s who were too cheap to press this issue and skipped going through the channels provided by 1.705 can now get a second bite at the apple.

    Comments?

  9. 5

    Kayton actually originally conceived of his PTA calculator as being an online subscription service (I guess he thought that law firms would subscribe to reduce the likelihood of possible malpractice charges for failing to notice improperly calculated patent terms), but apparently it didn’t catch on so he’s doing it for $200/pop. Maybe now he’ll revive the subscription service.

  11. 3

    Maybe some sharp programmer/patent expert will set up a website where we can just plug in all the event variables of each of our apps/issued patents and have it spit out the PTAs we’re entitled to.

    ‘ought to be worth at least $29-$99 per.

    Of course, would be nice if the PTO’d provide such a service as part of the fees already (being) paid.

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