PTA Recalculation Submissions

Although I have some problems with the USPTO’s claim of authority to act, prudent patentees will submit a PTA reconsideration form for patents issued since August 1, 2009 that might be owed additional patent term due to the Wyeth decision.

The recently distributed form (Titled a Request for Recalculation of Patent Term Adjustment in view of Wyeth) is exceedingly simple and requires only basic information regarding the patent and a signature. The applicant is not even required to indicate a belief that additional patent term is due. Forms are due on a rolling basis – always within 180-days of patent issuance. Thus, form should be immediately submitted for patents issued in early August, 2009.

Although PTA calculation is somewhat complex, the Wyeth change only impacts patents that meet the following criteria: (1) application actually filed on or after May 29, 2000 and (2) prosecution pendency of greater than three years. The vast majority of impacted cases will also include (3) a file history showing that the PTO delayed in examining the application during the first three years of pendency. The most likely PTO delay is that the Office waited more than 14-months before providing an initial examination response such as an office action rejection; restriction; or notice of allowance. Although only an educated guess, I suspect that the median additional term will be a bit under 1-year.

File Attachment: PTO Form SB-131 (Jan 2010).pdf (139 KB)

17 thoughts on “PTA Recalculation Submissions

  1. 14

    Team:

    1. Where does the PTO (and Prof Crouch) get their cutoff dates? The PTO date is now March 2010 but Dennis had an earlier date the other day.
    2. What’s the source of this: “…the Wyeth change only impacts patents that meet the following criteria: (1) application actually filed on or after May 29, 2000…” Ain’t in the CAFC opinion in Wyeth.
    3. As others have asked: what about already issued patents including patents going back to say 2000 which got early-terminated due to PTO’s mistaken calculation?
    4. Does everyone know that early-terminated patents are routinely on the PTO maintenance site as active and that PTO gladly accepts maintenance fees for same?
    5. Here’s a $64 question: 154 was amended so that the 20 years reaches back to the earliest in the app chain, such as a CON. In many cases, such as the erroneous application of 101, the patent may issue in say 2005, but if the earliest app was 1985, game’s over. Kind of a shock for any client honestly advised in 1985 and until 1994 that the period of its patent would be 17 years from the ISSUE DATE. Some inventors spent a fortune that way only to be thrown under the bus so our bureaucracy could make nice to the world…
    6. Basically, the USSCT needs to deep-six the current version of 154 as void for vagueness and–in some instances, a “Taking”.

    What say you, Professor?

  2. 13

    Ianae, you should not ignore your obligations to your clients in hopes of getting your client the most patent protection he can get.

    Sorry, I must have misunderstood the nature of your obligation when representing a client before the USPTO. I thought it had something to do with getting patents.

    If your obligation is to bill your clients as much as possible without getting sued, I would still recommend you spend 0.1 hours and fill out that form.

  3. 12

    Ianae, you should not ignore your obligations to your clients in hopes of getting your client the most patent protection he can get. (OTOH, perhaps the words “should” and “you” are not the best way to communicate)

    Jane asks, “Can the form be used if you have a Notice of Issuance, but the date for the patent to issue has not come?”

    (From the prior thread) Under 37 C.F.R. 1.705, a request to revise the patent term can be filed prior to issue based on the term indicated in the notice of allowance.

    Form 131 says “Do not use this form if the application has been allowed, but not yet issued as a patent.”

    Form 131 requires a patent number and an issue date, both can be obtained from the Notice of Issuance. So perhaps you can use Form 131 after receiving the Issue Notification and before the actual Issue Date. Maybe not. It’s not clear.

    Interestingly, the Issue Notification states “Any patent to issue from the above-identified application will include an indication of the adjustment on the front page.” To make this statement true, will the USPTO be reprinting its already issued patents for any new PTA adjustment? That would be a lot of money!

  4. 11

    can an inventor come back and sue me

    Maybe, but you should be more focused on doing your job and getting your client the most patent protection he can get, and less focused on being sued.

    Anyway, it’s probably tough to prove damages for the last few days of a non-pharma patent, and I’m sure your insurance will cover it. But asking your assistant to take ten minutes to fill out a simple form in defense of your client’s rights shouldn’t depend on whether said client will have a cause of action against you if you don’t.

    Because he’ll be looking for a new agent either way.

  5. 10

    If I don’t take ten minutes and file the simple form or if I don’t take even longer to advise my clients of their right to make a PTA adjustment request, can an inventor come back and sue me if they can prove that the PTA would have been extended from an initial patent term adjustment of 0 days or any other initial number of days?

  6. 8

    So if I had an initial patent term adjustment of 0 days – is there any point in filing this Recalculation Request? I realize I could just file it and let the PTO tell me “its still at 0 days” but I’m trying to be efficient here…

  7. 7

    Can the form be used if you have a Notice of Issuance, but the date for the patent to issue has not come?

  8. 6

    Courtenay, as Dennis was saying, I don’t think that they can take the burden off of patent holders at all. I think you need to go to court to have this done in the first place if you’re post IF payment.

    That said, I had that same thought: how is it not all or nothing? What’s with the arbitrary cutoff date?

  9. 5

    What disturbs me is that for patents issued since the Fed Cir decision until March, the PTO is saying that “We aren’t prepared to follow the law, so if you want us to follow the law you have to file a special request.”

    Or, put another way, “we are prepared to follow the law, so here’s a simple way to let us know it applies to you.”

  10. 2

    What disturbs me is that for patents issued since the Fed Cir decision until March, the PTO is saying that “We aren’t prepared to follow the law, so if you want us to follow the law you have to file a special request.” How can they put that burden back on patent holders?

  11. 1

    Heads up, folks. If you’re filing for an patent issued August 4, 2009, the 180-day date is this Sunday, January 31.

    So you might want to get on that by Monday.

Comments are closed.