Exelixis v. Kappos: Court Finds PTO is Still Undercalculating Patent Term Adjustments

by Dennis Crouch

Exelixis, Inc. v. Mr. David Kappos (as PTO Director), Case No. 1:12cv96 (E.D. Va. November 1, 2012)  Download Exelixis_and_Kappos

Judge Ellis recently sided with the patentee Exelixis in ruling that the PTO improperly under-calculated the patent term adjustment due to the patentee. The focus of the case is how the filing of a request for continued examination (RCE) impacts any eventual patent term adjustment (PTA). The judge does a nice job of clearly spelling out the holding:

In sum, the plain and unambiguous language of [35 U.S.C. § 154(b)(1)(B)] requires that the time devoted to an RCE tolls the running of the three year clock if the RCE is filed within the three year period. And, put simply, RCE's have no impact on PTA if filed after the three year deadline has passed. The PTO's arguments to the contrary are not persuasive and, accordingly, the PTO's interpretation of subparagraph (B) must be set aside as "not in accordance with law" and "in excess of [its] statutory . . . authority."

This holding further extends the scope of patent term adjustments beyond the prior enhancement identified in Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010). I am estimating that this newest change impacts about 10% of recently issued patents — particularly those whose first RCE filing was more than three years after the application's actual US filing date. Up to now, the PTO has been cutting-off further PTA beyond the RCE filing date and now those applicants are eligible to seek a greater term adjustment.  In many cases, the re-adjusted PTA will extend the term by more than one year. 

Client Alert Now to Avoid Malpractice: Patents issued within the past 180 days are eligible for a recalculation. However, that recalculation will likely require the filing of a lawsuit in the Eastern District of Virginia. 35 U.S.C. § 154(b)(4)(A). "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 Eastern District of Virginia within 180 days after the grant of the patent." For patents issued within the past two months, the PTA can be corrected via a request for reconsideration under 37 C.F.R. 1.705(d). Attorneys should beware to not simply assume that their clients are not interested in the work associated with obtaining an adjustment. The second action point here is, moving forward, applicants should not file an RCE before the three-year date without first fully considering the major PTA implications.

Judge Ellis begins the opinion with the simple question presented:

Whether 35 U.S.C. § 154(b)(1)(B) requires that an applicant's PTA be reduced by the time attributable to an RCE, where, as here, the RCE is filed after the expiration of AIPA's guaranteed three year period.

The text of section 154(b)(1)(B) begins with the headline of a "guarantee of no more than 3-year application pendency." The section provides that, subject to some caveats:

[I]f the issue of an original patent is delayed due to the failure of the [USPTO] to issue a patent within 3 years after the actual filing date of the application in the United States, not including—(i) any time consumed by continued examination of the application requested by the applicant under section 132 (b), … the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

In reading the statute, Judge Ellis found that the caveat for continued examination (RCE filing) modifies only the calculation of the original three-year timeline. An RCE filing prior the three-year mark will permanently toll the running of that clock. However, once the three-year delay is reached, the statute requires a 1-for-1 patent term adjustment from the three year mark through patent issuance.

Thus, subparagraph (B) essentially describes two calculations. The first is a description of the calculation of the three year period: The three year clock beings to run on the date the application is filed and, except for three specific potential tolling events, including the filing of an RCE, the clock runs continuously until the three year period ends. In other words, the "not including" portion of subparagraph (B), followed by (i), (ii), and (iii), clearly and unambiguously modifies and pertains to the three year period and does not apply to, or refer to, the day for day PTA remedy. Subparagraph (B)'s second calculation is simply a day for day addition to the PTA for every day beyond the end of the three year clock until the patent issues.

By implication, the result here is "that once the three year clock has run, PTA is to be awarded on a day for day basis regardless of subsequent events."

Up to now, the PTO has cut-off further type-B PTA at the point of an RCE filing – regardless of whether that RCE was filed after the three-year period. In its argument to the district court, the PTO asked that deference be given for its expert-agency interpretation of the statute. See Skidmore v. Swift & Co., 323 U.S. 134 (1944). The court rejected that argument. Basically, Skidmore deference comes about when there is some amount of ambiguity or lack of clarity in the statute. Here, however, the court found this question unambiguous and thus "that Skidmore deference is unwarranted."

Moving forward and except for continuation applications and delayed PCT applications, this ruling essentially guarantees that newly issued patents will be given a term of at least 17-years from issuance. This result substantially subverts a primary goal of the 20-year-from-filing term to eliminate the applicant incentive to keep an application pending for a long period of prosecution prior to issuance.

The USPTO has not yet announced whether it will appeal to the Federal Circuit. 

106 thoughts on “Exelixis v. Kappos: Court Finds PTO is Still Undercalculating Patent Term Adjustments

  1. 106

    What makes me so sure? Well, you’re either a self righteous, sanctimonious d#uche bag or a hypocrite. Take your pick. Personally I think you’re the former but it wouldn’t surprise me one bit if you are the latter.

  2. 105

    The substance of law and common sense. But you have to do so without your pretensions, snideness, and of course, without your agendas.

    Thanks for asking.

  3. 104

    It’s always fascinating how in every single case involving allegations of inequitable discussed on this site you are certain that applicants and/or their attorneys are guilty.

    By “every single case” I assume you mean “the single case.” I don’t recall any others offhand. How many do you count?

    Small sample sizes rarely make for “fascinating” trends.

    It’s unfortunate that your own self-hyped skill in the fields of DNA bits and protein fragments didn’t allow you to cash in on the gold rush of “powerful computer brain” inventions

    LOL. That’s hilarious. What makes you so sure I’m not “cashing in” on that “gold rush” along with everybody else? Surely you don’t think it takes a special technical background to draft those p.o.-. apps … or do you?

    bitter, jealous, petty, trifling and annoying

    I’m not bitter or jealous. Just tired of waiting for the smackdown. Prometheus was a nice appetizer. Did you see some of the responses posted to that decision? Wow. Talk about bitter and petty (not to mention incomprehensible and annoying) …

  4. 102

    Since you are too dense to understand my earlier criticism of your bizarre question, let me try again to help you.

    Rather than insults, you can help me by trying to actually answer the question.

    Substance. Try it.

  5. 101

    I don’t represent “Internet inventors,” Malcolm.

    It’s always fascinating how in every single case involving allegations of inequitable discussed on this site you are certain that applicants and/or their attorneys are guilty. Regardless of the decision of the court.

    It’s unfortunate that your own self-hyped skill in the fields of DNA bits and protein fragments didn’t allow you to cash in on the gold rush of “powerful computer brain” inventions, but what’s more unfortunate is how bitter, jealous, petty, trifling and annoying you are as a result.

  6. 100

    Can you imagine how hard it would be to freely alienate shares of stock if someone had to maintain an up-to-date register of who owned them?

    Nobody can imagine that! Wow. I just saw on TV that Zombie Patrick Henry bust out of his tomb and began weeping and soiling himself as a direct result of your even suggesting that people try to imagine such a freedomless nightmare world.

  7. 99

    Did you have a different more specific point that you were trying to make with your bizarre question?

    I think what he’s trying to say is that patents should be treated the same way as other property, such as land, cars, and shares of stock that don’t have to be registered to the current owner.

    Because for some reason it would be some kind of affront to the freedom to buy and sell patents if the public knew who owned them. Can you imagine how hard it would be to freely alienate shares of stock if someone had to maintain an up-to-date register of who owned them?

  8. 98

    How do you LEGALLY (that is, give me the law you rely on) distinguish one form of personal property from another?

    Since you are too dense to understand my earlier criticism of your bizarre question, let me try again to help you.

    It’s an irrefutable fact that nobody needs to rely on any law to distinguish one form of personal property from another. We can all just use our senses (eyes, ears, nose, touch) to distinguish one form of personal property from another. My coffee table is hard. My orange juice is wet. I relied on no law. See how that works, anon?

    Did you have a different more specific point that you were trying to make with your bizarre question? If so, make it. Maybe get your mom to help you if you have difficulty finding the words. Or continue behaving like a j—a–. It’s really up to you, anon.

  9. 96

    Answered with a strawman? Really? Is that the best you can do?

    You are going to have to get over your fear of being burned when you venture into substantive territory if you ever want to hold adult conversations without your empty gamesmanship.

    Of course, your track record of getting burned has a lot to do with why you stick to the low road in your comments. But hey, everyone can have an opinion and you are talking “policy,” so why bother with substance?

  10. 95

    Lolz. In an art unit previously shown by Prof. Crouch to have one of the lower quality records (and for which MM’s ‘perfect record’ picture claiming can only mean that the remaining average is even lower and of less “quality”), 100% of worthless claims is somehow more valuable than 50% of truly (as in this world) worthwhile claims…

    More MM self-defeat.

  11. 93

    You have yet to show me one of my real lies.

    Are you going to vanish again when substance is requested?

    (That’s rhetorical – I already know the answer)

  12. 92

    Malcolm is the only member of the patent bar (quite an assumption there) that has any ethics. The rest of us

    It’s always fascinating that some people take it very, very personally when any member of their large and vaguely defined tribe is slighted in the least way (or even “implicitly”, according to some inarticulated standard). In addition, there’s really nothing less attractive than a well-paid attorney with really thin skin unless it’s a well-paid patent prosecutor who’s convinced that he/she is making the world a better place by being super “zealous” on behalf of his/her Internet inventor.

    Here’s the deal, AAA JJ: you might be the most ethical super-zealous patent prosecutor in world history. That doesn’t change the fact that not everybody is like you, and it doesn’t change the fact that a large fraction of patent applicants at the USPTO practice in a fantasy world where everything is eligile, everything is enabled, nothing is obvious and the key to “success” is simply to swamp the PTO with g-rb-ge then complain that the g-r-bage isn’t being sniffed quickly enough. Nice game.

  13. 91

    “So what did the examiner do wrong?”
    Affirmed in part also means reversed-in-part. The Examiner could have indicated allowable subject matter. However, when you have an Examiner that has only issued 6 patents in 8 years, I’m sure he forgets how to indicate allowable subject matter.

  14. 90

    Some of us think our clients are entitled to a little more. And can actually get it for them.

    Right. 50% of the time, at least. You get paid the same either way.

  15. 89

    It is nice to see the curtain pulled back, like when you talk about just happily accepting whatever useless picture claim the examiner is willing to give you. Some of us think our clients are entitled to a little more. And can actually get it for them. Sorry that you won’t and can’t.

  16. 88

    Presumably you would give the client sound legal advice and zealously represent them within the bounds of the law.

    Oh, that’s right, I forgot, Malcolm is the only member of the patent bar (quite an assumption there) that has any ethics. The rest of us would stabl our own grandmothers in the back or sell our children to get the client a patent.

    Nothing to see here folks. Move along.

  17. 86

    that is an example of someone being frustrated by the crackdown

    Actually it’s an example of the exact opposite. If there was a “crackdown”, anon, you wouldn’t be commenting here because you and 101E are the only two commenters who habitually (day in, day out) accuse everyone with an “implicit” “anti-patent” “agenda” of telling lies and misrepresenting the law. You do this without provocation, regardless of whether the commenters you are personally attacking are even participating in the thread.

    Just another indisputable fact for you to ignore.

  18. 85

    Maybe you meant to ask another question.

    No. My question is good – just don’t make a strawman out of it and try to hold an intellectually honest conversation (if you can).

  19. 84

    Appeal everything. There’s a 50% chance…Appeal. Appeal. Appeal. … there’s a 50% chance

    I remember a few years back when some commenters here would get all whiney when someone suggested that for many prosecutors the practice was all about throwing t–let paper at the wall to see what would stick.

    It’s nice to see the curtains pulled back occasionally.

  20. 83

    How do you LEGALLY (that is, give me the law you rely on) distinguish one form of personal property from another?

    When the police obtained a warrant and entered your house and discovered your oxycodone lab, they were somehow able to distinguish it from candy.

    Was that illegal?

    Maybe you meant to ask another question. Good luck “reformulating”. LOL.

  21. 82

    And let me add substance as to how the Office controls the RCE decision point to be prior to the critical three year date:

    Start: applicant submits application.

    At one month, Office responds with rejection (you did claim any amount of Office time).

    This means that a first response must be no later than Month Seven.

    Month Eight: Office responds
    Path A: final rejection. The applicant is at the RCE decision point no later than Month Fourteen. (Note that this is roughly on par with the current accelerated examination results).
    Path B: second nonifinal rejection (more rare, but plausible). Applicant must respond no later than Month Fourteen.

    Month Fifteen: Office responds
    Path B: by almost all (reasonable) likelihood, this will be a final rejection and the RCE decision point is reached no later than Month Twentyone.

    I’m pretty sure that the fifteen month buffer remaining can take care of any reasonable additional applicant “competent prosecutor” tricks.

  22. 81

    Did I say that you were being anti-applicant?

    A little self conscious IANAE? Talk about not reading…(and yet again your theories are off)

    Methinks the frustration from too many Calvinballs to the face is being projected by you.

    As for turning a 14 month action into a three year decision point, I didn’t say it couldn’t be done – I asked you to add some substance (could be done and would be done can be differentiated only with substance – something you are lacking).

  23. 80

    Just received a Notice of Allowance with 2057 days PTA. No RCE. Successful appeal. Imagine how much more I could have gotten if I was a “clever applicant” who knew how “to play the old game again.”

    Gotta run. My fillings are receiving some irrefutable transmissions from the evil overlords of the slimy, underhanded, dastardly patent applicants and attorneys hall of injustice league.

  24. 79

    anti-applicant

    Even when I say I have a way for applicants to get as much patent term as they like, you call me anti-applicant?

    This corroborates my theory that you don’t bother to read anything, you just throw out the same name-calling over and over again. Something about anti-patent straw prisoners self-Calvinballing, was it?

    Or are you just frustrated that you can’t figure out the obvious way to more or less reliably turn a 14-month first action into a 3-year time to first RCE?

  25. 78

    as soon as word gets around about how the competent prosecutors are doing it.

    Sorry IANAE, your conclusory statement does not wash. Even with current timing requirements it is quite “easy” (if the government meets its first action guarantee) to force the application to a pre-3year critical date RCE decision point. Your mysterious “competent prosecutor can stretch that decision point past the RCE decision point” needs a little substance. Please tell how the applicant can control this process as you tease.

    Btw – an excellent (and non-anti-applicant) write-up of this is now available at PatentDocs.

  26. 77

    It should be obvious why.

    It should be obvious to you why not, as soon as word gets around about how the competent prosecutors are doing it.

  27. 76

    Not at the moment. Most likely not for a few years.

    That is completely an Office issue – do not penalize applicants for the Office failure to meet the Congress implemented guarantees.

    no matter how quick the PTO gets at mailing first actions.

    Completely wrong. It should be obvious why.

  28. 75

    See, this is much more challenging for you when you use the same name all the time.

    Your view on this is completely wrong (much like many of your views on theories concerning me). My posting content is consistent – the “sockpuppet scare” is an overblown QQ which has very very very little to do with actual quality of the blog. The bigger problems are still present – although since Prof. Crouch has come out and firmly stated that outright lying is not allowed, MM has had to be more subtle in pushing his agenda, and has had to stop lying about certain facts and law. And since I pushed Ned to admit his “shilling” basis, his posts on those topics are much more readily seen as advertisement and not as attempts at serious discussion. I am not certain why Leopold fights so hard the plain “acceptable use” understanding, but clearly, the greater challenge is for those who cannot seem to follow the rules already present. I still think a strike system against those not following posted rules would do far more to improve content than any type of using the same name protocol.

  29. 74

    still standing by your bizarro interpretation that a second RCE after three years restarts the clock for PTA.

    Not quite decided on this, in view of how my original view of the RCE prior to the three year date was actually dead-on.

    One thing I am wrestling with is how the court portrayed the RCE as just another amendment option – as if it should be treated as a stand-alone event.

    If indeed a second RCE ends the first RCE, then the clock stoppage for the first RCE must in fact be over. Critically – and on the contrary to your “bizarro characterization,” A first RCE can easily have a terminal event during prosecution that in fact starts up the three year clock. Therefore, I am not convinced that a first RCE must run onto the end of race. There are other things that trigger a new examination start (for example, opening up again during the appeals process).

    I am tending towards the view posted by metoo that the clock starts up again – but at the earlier point, rather than a pure calendar view. In this case, the second RCE – if it starts on the heals of the first, would also be considered an RCE before the three year critical date. But this assuredly does not mean that a second RCE must be before that three year critical date.

  30. 73

    They do.

    Not at the moment. Most likely not for a few years. And even then, not nearly as much as you think they will. It should be more or less trivial for interested applicants to take advantage of this case (what it actually says, as opposed to what you think it says), no matter how quick the PTO gets at mailing first actions.

    They do.

    Also, they don’t, if you’re still standing by your bizarro interpretation that a second RCE after three years restarts the clock for PTA. See, this is much more challenging for you when you use the same name all the time.

  31. 69

    I am surprised though that MM has neglected to mention footnote 17, quoting from Allergan, Inc. v. Alcon Laboratories, Inc., 324F.3d 1322, 1346 (Fed. Cir.):

    “it is the function of Congress, not the courts, to shape legislation in accordance with policy goals”

    It does seem that he wanted a quote on policy. Maybe he was too busy yucking it up with another self-defeat to get that far into the decision. Or maybe he just wants to ignore the law as it actually is.

  32. 67

    After Wyeth, and now after Exelixis, do you not have an ethical duty to check patent term adjustment calculations? The work product of prosecution may not be considered complete without doing so.

  33. 66

    How would the PTO know who currently owns the patent? Is there a law requiring that such information to be provided to the USPTO?

    Just kidding.

    Lol in your attempted humor, you self defeat once again. So answer the question MM, is there a law REQUIRING you to provide such information on personal property to the USPTO? How do you LEGALLY (that is, give me the law you rely on) distinguish one form of personal property from another? For this reality, here and now?

    Please do tell.

  34. 64

    Agreed. Imagine if you went to your CEO and asked to sue the PTO in court over this issue on a patent of dubious and unknown value at 20years from filing? Drug companies do care, but no too many others.

    I think the major problem here was that the PTO got involved at all. The prosecution history is of record and the record speaks for itself. When a patent expires is a matter of law, not of PTO “discretion.”

  35. 63

    The way some firms have protected themselves from malpractice claims for not getting a client a maximum possible patent term [unlikely to succeed anyway in view of statutues of limitations?] is to request in writing standing instructions from clients as to whether or not the client wants to pay the firm for the extra costs of regularly checking the PTO’s calcuations of the term extensions on the clients patents. Most will not.

  36. 62

    I’m not haunted by anything, AAA JJ. You brought up the “tinfoil hat society” in response to my (correct, irrefutable) assertion that this case provides applicants with the means to obtain patents with terms that extend waaaay beyond 20 years after the filing date and waaaaay out of proportion to any USPTO-caused delay.

    You speak of Symbol Technologies like it’s some easily applied catch-all. It’s not.

  37. 61

    I have no connection with the patent or examiner you cite, either. However, in the example you provide (7,729,943) the rejections were affirmed-in-part on appeal. So what did the examiner do wrong?

  38. 60

    You obviously filled out the application. Congratulations.

    When patent attorneys check the “First Office Action Prediction” tab in PAIR and see that they can expect a FAOM in 52 months, there’s really no need to engage in a whole lot of shenanigans to delay the need to file an RCE until after the expiration of the 3 year B period. Changing the PAP (performance appraisal plan) to give the examiners 4 months to respond to amendments/responses from applicants, an increase from the 2 months they got previously, also makes it less likely that applicants need to file an RCE before the expiration of the B period.

    BTW, don’t file RCE’s. Appeal everything. File a Notice of Appeal with a pre-appeal brief request for review. There’s a 50% chance the examiner will re-open. So you didn’t file an RCE that gets dumped onto the examiner’s continuing case docket, the fee for the Notice of Appeal is less than the RCE fee, and the examiner gets zero counts for re-opening and issuing a new OA. It’s win-win. Even if you have to file an appeal brief, there’s a 50% chance you’ll get some allowable subject matter (and an even higher probability if your case is in the sh!tty TC 3600 or TC 3700, which have abysmal affirmance rates).

    Appeal. Appeal. Appeal.

  39. 59

    True dat. Since any delay by the applicant is only deducted from the final PTA calculation, this case opens to door for all sorts of shenanigans intended to ensure that there is no final action within 24 months of your filing date. Not good at all. It’s one thing to hold the PTO’s feet to the fire, but it’s quite another to allow patent attorneys to show up with a can of gasoline to make that fire bigger.

  40. 58

    It need not reach a final disposition, simply a time for a first RCE. I’m not sure how the math would work if you did file a first RCE within the three years, but then filed a subsequent RCE after the three year period. As I read it you need to file your first RCE after the end of the three year period to benefit from this updated interpretation.

  41. 57

    And you’re still haunted by his ghost. Have mommy tuck you in real tight tonight. Leave your night light on.

    Did you miss the Symbol Technologies decision? Did you not see where the court in Exelixis clearly stated that § 154(b) does not treat an RCE filing as applicant delay?

    Move along folks. Nothing to see here.

  42. 55

    The answer must be that few patent owners other than drug companies CARE if their patents will last longer than 20 years from their original filing date?

    Certainly very few non-pharma patent owners would be willing to shell out for litigation over a mere four months of PTA, and fewer still are as confident when the patent issues that those last few days will be valuable enough in 17 years to justify the expenditure up front.

  43. 54

    Query: if you receive a final office action dated 30.1 months from your filing date, would it be foolish not to wait the entire 6 months before filing an RCE?

    Exactly. Or to put it another way: could it be considered malpractice to file sooner if you knew that patent term was especially important to the applicant?

  44. 53

    the PTO communicate its recalculation to every affected patent owner

    How would the PTO know who currently owns the patent? Is there a law requiring that such information to be provided to the USPTO?

    Just kidding.

  45. 52

    This is the SECOND occasion on which a long-unchallenged PTO interpretation of the Byzantine 1995 patent term legislation has only been belatedly challenged and judicially overuled. There seems to be ample blame to pass around, among the Congressional authors, its PTO interpreters, and thousands of un-challenging patent attorneys and clients, to get a proper statutory interpretation. [More accurately, an interpretation that 2 CAFC judges can be convinced of.]
    The answer must be that few patent owners other than drug companies CARE if their patents will last longer than 20 years from their original filing date? Even those who pay all the maintennce fees.

  46. 51

    Tin Foil Hat Society

    Because people like Lemelson never existed. Move along, folks. Nothing to see here.

  47. 50

    As some have alluded to, if this case is not appealed and reversed, it would be foolish to file an appeal before the 3 year clock has run. The same analysis applies to appellate review by the PTAB. Also, this case puts a premium on challenging the finality of an office action, where warranted. Yes, examiners don’t like that, and most of the time their decision on finality is correct. However, by not challenging finality where appropriate, your client could be losing years of PTA.

    Query: if you receive a final office action dated 30.1 months from your filing date, would it be foolish not to wait the entire 6 months before filing an RCE?

  48. 49

    You are incorrect. My logic is not what the PTO was using. No, the PTO’s position was that you subtract any time consumed by RCE’s from the PTA award part B. What I am saying, which is exactly what the court said, is that “an RCE filed during the running of the three year clock TOLLS the running of that clock while the RCE is processed.” And “the time devoted to an RCE…should not be counted against the PTO in the running of the three year clock.” The 3 year date is not “calculation one in the decision,” as you assert. No, it’s a running clock that is stopped when an RCE is filed before the 3 year time limit is up. And once the first RCE is “processed”, the clock does not magically leap to 3+ years, it starts running again from the point at which it stopped. That’s what TOLLING means–to temporarily suspend a running clock.

    What the PTO got wrong is viewing an RCE as something which subtracts from B-type PTA. It does not. Rather, it TOLLS, i.e., temporarily stops, the running 3 year clock. But when a second RCE is filed, the clock still has not reached the 3 year limit since it’s stuck where it was when the 1st RCE was filed.

    Again, as the court clearly stated “the time devoted to an RCE serves to TOLL the running of the three year clock.”

  49. 48

    I don’t know if the law specifies that the additional term must be specified in the record by the PTO, but I think the simple rememy here is for the court to order a PTO recalculation for every patent in the last X years that had an RCE where the PTO calculation was erroneious, and that the PTO communicate its recalculation to every affected patent owner.

  50. 46

    And, since that paused clock never restarts (at least under current interpretations, the Notice of Allowance issue wasn’t decided in this case), the 3 year period is never reached.

    Since the 3 year period is never reached, there is no extension “for each day after the end of that 3-year period.”

  51. 45

    anon, you are correct that the 3 year date is the driver. What you are missing is how that driver, i.e., that 3 year date, is measured.

    The court stated: “[T]he statute simply treats the time devoted to an RCE as the time that should not be counted against the PTO in the running of the three year clock.”

    “The three year clock begins to run on the date the application is filed and, except for three specific potential [pausing] events, including the filing of an RCE, the clock runs continuously until the three year period ends.”

    “[T]he ‘not including’ portion of subparagraph (B), followed by (i), (ii), and (iii), clearly and unambiguously modifies and pertains to the three year period and does not apply to, or refer to, the day for day PTA remedy.”

    So, while the driver is the 3 year date, the statute specifically (and unambiguously) defines how that 3 year date is measured. The filing of an RCE (or the filing of an appeal, or the occurrence of any of the other listed conditions) before the three year date pauses the clock that measures the 3 year date.

  52. 43

    I’m sorry Leopold, what are the right words for describing “doesn’t make it correct,” or for that matter, “making some sense of what [I] said“? My sense is clear and comes from the court. You too should read the decision before putting another arrow to your bow.

  53. 42

    You can rest assured that Applicants will be be taking advantage unless the opportunity is removed, by court or Congress.

    Or until the PTO consistently reaches, in less than 3 years, a final disposition that it can defend.

  54. 41

    Don’t blame me for “correctness”

    I, for one, wouldn’t dream of it.

    Anyway, I’m far too busy self-defeating dead prisoners.

  55. 39

    unless the opportunity is removed, by court or Congress.

    You forgot a third option: the government could actually meet its (Congress-implemented) guarantee.

  56. 37

    “Dennis’ point was a fair one and he’s hardly alone in his assessment. The door has been opened for clever Applicants to play the old game again. You can rest assured that Applicants will be be taking advantage unless the opportunity is removed, by court or Congress.”

    Is there an online application that I can fill out to join the Tin Foil Hat Society?

  57. 36

    Don’t blame me for “correctness” – all I am doing is explaining what the court has put forth. If you think it not correct, it is the court you must now overcome.

  58. 35

    Nice – but have you even read the case yet? I doubt it very much. You shouldn’t play Calvinball without understanding what you are talking about.

    The meaning from my post is quite clear. I am simply setting the logic of the court before you. You think it doesn’t make sense? Thanks for the admission that you don’t understand the law.

    You have an RCE file date after the 3 year date? Tough noogies government, you’ve blown the guarantee and there is now a day-for-day PTA adjustment regardless of any number of RCE’s in the prosecution.

    The logic of why that is so clearly means that it does make a difference when that RCE file date is.

    That same logic means your statement of “The “span” from RCE filing to any future date you may choose is completely irrelevant. is simply wrong. You are relying on the same logic the government used. That logic is gone.

    You have an RCE file date prior to the 3 year date? toll the time from that RCE file date to the 3 year date and that is removed from any calculated PTA. That is your tolling. An RCE simply does not remove or eradicate the critical 3 year guarantee. Rather than completely irrelevant, it actually is the only thing relevant.

  59. 34

    as the court was not presented that issue.

    This is true. However, the logic that is used by the court supports this reading.

    The first RCE stops the clock at 2.5 (that’s what is meant by the term “tolling”). So you’re still stuck at 2.5 when you file the second RCE.

    No. You are applying the logic used by the government. That logic lost.

    Read the case again me too. When you do, pay attention to the fact that the 3 year date of the guarantee is the driver (Calculation one in the decision) and the RCE tolling is completely subservient to that driver. Like the government, you have the master/slave relationship backwards.

  60. 33

    re-define “spanning the date” to mean “after the date.”

    Now, there’s a self-Calvinballing strawman if ever I saw one.

  61. 32

    To be clear, that allows you to make some sense of what anon said. That doesn’t make it correct.

  62. 31

    Go on, try to make any sense of what anon said without sounding absurdly pedantic. I bet it can’t be done.

    Oh, sure it can; no pedantry neeed. Instead, you simply need to invoke anon’s “common sense” rule from KSR, which allows you to re-define “spanning the date” to mean “after the date.”

  63. 29

    that I would argue probably extends until issue.

    If that’s your interpretation, and it’s not an unreasonable one if we’re going to force what anon said to have any meaning at all, then RCEs that “span” the three-year mark are precisely not the kind that are entitled to PTA.

    In any event, it makes no sense to talk about RCEs being liable for/entitled to PTA. The application is what is entitled to PTA, and it remains so until an RCE on the wrong date cuts off that entitlement. The “span” from RCE filing to any future date you may choose is completely irrelevant.

    Go on, try to make any sense of what anon said without sounding absurdly pedantic. I bet it can’t be done.

  64. 28

    I think you may be reading too much into the opinion with respect to the filing of a second RCE, as the court was not presented that issue. Also, I think you are incorrect.

    Lets say a first RCE is filed 2.5 years after the filing date, a second RCE is filed 3.5 years after the filing date, and the patent issues 4.5 years after the filing date. The first RCE stops the clock at 2.5 (that’s what is meant by the term “tolling”). So you’re still stuck at 2.5 when you file the second RCE. As a result, the tolling kicks in again for your second RCE–you’re still stuck on 2.5 years, and you never get any PTA (of the B variety).

    On the other hand, I do think that footnote 3 in the decision raises an interesting point, but one which would not arise very often. Since tolling in this instance applies to time consumed by continued examination, it seems to me that the tolling should stop when the Notice of Allowance issues (i.e., the 3 year clock starts ticking again).

    In my scenario above, you would only get PTA if it takes longer than 0.5 years for the patent to issue from the date of the Notice of Allowance. Remember, the clock merely stopped at 2.5 years, and then resumes ticking when the Notice of Allowance issues. So the footnote 3 issue would only give more PTA when the first RCE is filed less than within 4-5 months of the 3 year anniversary of the filing date

  65. 27

    To be absurdly pedantic, the RCE has a fixed date, because it’s just a request. The continued examination arising from the request spans a period that isn’t well-defined by either statute or regulation, but that I would argue probably extends until issue.

  66. 25

    You don’t even have to ask or go visit Gene. Personally, I avoid that website as well since Gene gets far too political for my liking and is far too defensive.

    Regardless, you can get a free 2-day trial here:

    link to patentcore.com

    I may take them up on the free trial

  67. 23

    In essence,

    In “essence”, what you wrote was untrue. At least, you can’t provide the names of multiple examiners who refuse to allow applications without appeal. That’s all I was curious about. I haven’t even bothered to look at the claims of the applications in question, which I’m sure would also be insightful.

    Thanks.

  68. 22

    The court result doesn’t subvert anything.

    I disagree. Dennis’ point was a fair one and he’s hardly alone in his assessment. The door has been opened for clever Applicants to play the old game again. You can rest assured that Applicants will be be taking advantage unless the opportunity is removed, by court or Congress.

  69. 21

    If MM is so hungry for names, may I suggest that he visit the guest columnist Christopher Holt at IPWatchdog at link to ipwatchdog.com ?

    If MM asks nicely, maybe Mr. Holt will give MM a deal or trial run. Note that I have no affiliation whatsoever with Mr. Holt or with PatentCore.

    In the meantime, let’s all read MM’s substantive comments on the subject. OK, that’s done.

  70. 20

    … and another thing. There are some clients that just won’t appeal (thankfully, not the ones I deal with but I know of them). In those circumstances, against this type of examiner, the likelihood of getting an allowance is almost nil.

  71. 19

    “Names, please”
    I knew my comment would bring you out of the woodwork.

    I’m not going to name names. However, I will give you a patent number: 7,729,943. I have no connection with this patent or examiner but I came by this information awhile ago.

    In 8 years, the Examiner responsible for this patent issued 28 patents or about 3.5 patents a year – not particularly productive IMHO. 2 of those 28 were special circumstances so I won’t count them. Out of the remaining 26 applications, 20 of those were issued based upon a decision from the Board. That means in the last 8 years this particular examiner has issued 6 patents that he thought were patentable. Of those 6, the number of office actions (RCEs) before an allowance (chronologically – more recent to latest) are 10(4), 13(7), 11(4), 7(2), 6(1), and 7(1). The model of “compact prosecution” this is not. In essence, unless you win on appeal don’t expect to get an allowance.

    Unfortunately, this is not the only example I have. If you want more, you have to agree to email me (I’ll provide you with an email address) with your work email address since the additional information could out me.

  72. 18

    Also, RCEs don’t “span” dates, they’re on dates

    An RCE may have a filed on date, but they clearly span a length of time. Please remove the Calvinball from your face so that you can brush up on the basics of this area of law before your next post.

  73. 17

    In other words, the maximum deduction for any RCE tolling is the span of time from the filing (prior to the three year date) TO that three year date, and ANY RCE spanning the date is also liable for increased PTA.

    You’re only entitled to PTA if the process takes longer than 3 years, not counting continued examination. Everything that happens after the first RCE is continued examination. How would filing more RCEs help?

    Also, RCEs don’t “span” dates, they’re on dates.

  74. 16

    and extending beyond the three year period will not result in a day by day increase of that “beyond the three year period” time frame.

    I may have misstated this. After thinking about how this is phrased (and reading the decision yet again – noting footnote 3 of the decision and especially pages 8-9 and 11 of the decision – with a nod of using a quote from Wyeth to get to FRCP 56(c)), the PTA remedy of time after the three year mark is reached is off limits – including any time under the first RCE after that three year date.

    In other words, the maximum deduction for any RCE tolling is the span of time from the filing (prior to the three year date) TO that three year date, and ANY RCE spanning the date is also liable for increased PTA.

  75. 14

    look at what happens in the 3600 tech center. There are some examiners there that will not allow an application unless they lose on appeal.

    Names, please.

  76. 13

    Just Saying:

    Names, please? I’d like to check the accuracy of this assertion.

    the INTENT of the statute was [to] guarantee applicants their 17 year patent term.

    No, the intent of Patent Term Adjustment was to prevent Applicants from losing patent term as a result of USPTO delay. There was absolutely no guarantee of a 17 year patent term intended by the statute. Quite the opposite.

  77. 12

    I’m not sure that I’m 100% accurate in saying this, but I’ll say it anyway: In every single case where the PTO’s calculation of PTA has been challenged, they have lost.

  78. 11

    Isn’t a Request for Reconsideration under 37 C.F.R. 1.705(d) also a remedy for patents issued within the past 2 months?

  79. 10

    Right – I agree that the statute has an important competing (and directly stated) purpose of guaranteeing no more than a 3-year pendency. In reality, the statute does not guarantee that every patent will have a short pendency, but it describes how the applicant will be compensated if the PTO fails to provide the guaranteed service.

  80. 9

    Funny how I only realized that now that the federal district judge pointed it out.

    Funny how sloppy drafting seems to work that way when patents are involved.

  81. 8

    Not to mention that examiners get counts for processing RCEs. The counts diminish (slightly) over time, but the examination usually becomes easier too (the examiner is more experienced, and much more familiar with the case).

  82. 7

    Just Saying,

    On second reading, I agree. You’re right.

    Although, if Exelisis original argument (also) prevails, then the clock *can* restart. It would restart with the notice of allowance. After that, the three year clock could expire, then applicants could file an RCE, and get more Lemelson patents.

    But you’re right, the RCE *tolls* the three year clock.

    Having read the statute about 30 times today, I agree with the district court that this its plain and ambiguous meaning. I’m not sure that it’s what Congress intended. But it’s what the words mean. Funny how I only realized that now that the federal district judge pointed it out.

  83. 6

    What I think was very interesting was the Court’s recognition that the USPTO considers an RCE as “a valuable tool in the patent prosecution process” and not one of the ’11 enumerated applicant delays.’

    Agreed – and as I noted, I have hard Kappos directly allude to the first RCE as a normal course of prosecution.

    What the Court’s decision leaves open is the ability of the USPTO to classify certain RCEs as applicant delay.

    Disagreed – this would amount to a substantive change in law and is beyond the power of the Office (See Tafas).

  84. 5

    In other words, the district court ruled that RCE-days are only excluded from type B PTA to the extent that they consume the 3 year period. Once the 3 year period expires, both past and future RCEs are irrelevant.

    Not quite true. An RCE started before the start of the three year period and extending beyond the three year period will not result in a day by day increase of that “beyond the three year period” time frame.

    I have looked for some factual or legal error that could rise to the level of this decision being overturned, and I have not found it (yet). Closest that I could come to so far is the sense of inequity as to timing, as an applicant applying for an RCE the day after the expiration of the three year period is treated vastly different than the applicant who request an RCE the day before the three year period. However, this same type of disparity was argued – and accepted in the Wyeth case.

    Also, let’s keep the focus here on not penalizing the applicant for the Office malfeasance (and yes malfeasance is a proper word for violating the three year guarantee of three years at the core of the issue). Absent law, absent facts, “policy” becomes the table pounder, but the driving policy here is the Office getting the job done, and there is no policy focus on the applicant. The law as clearly (?!) written puts the onus squarely on the Office.

    Let’s also pre-empt the canard of “wearing down the examiner.” While an applicant can request RCE after RCE after RCE (with the provisio that the applicant is trying to move prosecution forward), there is no “wearing down” if the examiner has done a complete and thorough job, because in such a case. the applicant will never prevail. If the examination is solid at the first instance, it will stand on its own, and no amount of RCE requests will change that actuality.

  85. 4

    “Applicants will entitled to huge amounts of type B PTA, even if they file a first RCE before the 3 year date, as long as they keep filing RCEs afterward.”

    I disagree. As stated by the court “the time devoted to an RCE tolls the running of the three year clock if the RCE is filed within the three period.” Once tolled, there is no mechanism to begin the clock again – as such, it never reaches 3 years.

    Also page 7 of the opinion talks about the “disparate treatment of some similarly situated applicants, depending on whether the applicant files the RCE before or after the expiration of the three year period.” Thus, the Court recognizes that there will be a substantive effect on PTA depending upon when the RCE was filed.

    What I think was very interesting was the Court’s recognition that the USPTO considers an RCE as “a valuable tool in the patent prosecution process” and not one of the “11 enumerated applicant delays.” The Court also recognized that the USPTO can affect the filing of a RCE by simply issuing their office actions quick enough so that the RCE must be filed before the 3 year period.

    What the Court’s decision leaves open is the ability of the USPTO to classify certain RCEs as applicant delay.

    “I agree with you that this completely subverts the intent to eliminate the incentive for long prosecution.”
    I see where this can be abused. However, the INTENT of the statute was guarantee applicants their 17 year patent term. The vast, vast majority of RCEs are not filed for the purpose of delaying prosecution. Instead, they are a normal part of the patent prosecution process in which the Examiner and Applicant may not be able to agree on allowable subject after one bite of the apple (i.e., amendment). To me, it seems entirely unfair to have Applicants have their patent term reduced because they face intransigent examiners that will not allow an application until after 8 office actions and 3 RCEs. If you don’t think that happens, just look at what happens in the 3600 tech center. There are some examiners there that will not allow an application unless they lose on appeal.

    I think that any abuse of the RCEs could be curtailed by (i) Symbol Tech. v. Lemelson, (ii) the USPTO classifying that the filing of the 3rd or 4th (or some other number) RCE as being “applicant delay,’ (iii) putting in place mechanisms whereby older applications are given expedited handling, and (iv) issuing final office actions within 2 ½ years from filing – which forces applicant to either appeal or file a RCE before the 3 year period (which permanently tolls type B PTA).

  86. 3

    I agree. The PTO is supposed to get to a meaningful final disposition, one way or the other, in three years. The court result doesn’t subvert anything.

    Now, it’s fair to say that the PTO’s continued failure to meet the 3-year standard will subvert a goal of the legislation.

  87. 2

    Dennis,

    As far as I can tell, the district court’s opinion is more sweeping than you suggest. Applicants will entitled to huge amounts of type B PTA, even if they file a first RCE before the 3 year date, as long as they keep filing RCEs afterward.

    In other words, the district court ruled that RCE-days are only excluded from type B PTA to the extent that they consume the 3 year period. Once the 3 year period expires, both past and future RCEs are irrelevant.

    This won’t effect 10% of applications. It will effect huge, huge amounts. But I doubt that the CAFC would uphold this.

    I agree with you that this completely subverts the intent to eliminate the incentive for long prosecution. But the judge held that it’s not his job to correct the statute’s plain meaning. The decision blew me away.

  88. 1

    This result substantially subverts a primary goal of the 20-year-from-filing term to eliminate the applicant incentive to keep an application pending for a long period of prosecution prior to issuance.

    Not sure I would have used this language to describe the government’s guarantee of prompt action and completion of examination made in the trade-off move from moving the term from issuance to filing.

    Our country wanted to harmonize, (sure, OK, I guess), but we should not harmonize at the expense of applicant rights. Breaking a deal with the applicant should not be phrased as “subversion.”

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