The Eastern District of Virginia recently determined in Exelixis, Inc. v. Kappos that the USPTO has been miscalculating Patent Term Adjustment (PTA) in cases where a Request for Continued Examination (RCE) was filed after three or more years of pendency. The USPTO has for many years interpreted the statute governing PTA as immediately tolling the three year statutory period for the calculation of PTA upon the filing of an RCE, regardless of whether the RCE is filed before or after the three year mark. But, in Exelixis, the USPTO was ordered to calculate the PTA on a day-for-day basis when an RCE is filed after three years from filing regardless of what else occurs during the continued prosecution, i.e., the filing of an RCE after the three year mark has “no impact on PTA.” It is unclear at this time whether the USPTO will adjust their PTA calculation rules to adhere to the order generally, whether the USPTO will appeal to the Federal Circuit, or whether the USPTO will simply maintain the current practice. But, patent owners should consider auditing their portfolio with eyes for cases where an RCE was filed three or more years after the filing date. If the patent is within two months of issuance, the PTA can be challenged within the USPTO by filing a request for reconsideration under 37 C.F.R. 1.705(d). If the patent issued within the past 180 days, the owner can choose to challenge the ruling in the Eastern District of Virginia, under the precedent of Exelixis.
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