Wyeth v. Kappos

The Court of Appeals for the Federal Circuit recently decided Wyeth v. Kappos (Fed. Cir. 2010) (PDF), a case regarding patent term adjustment (“PTA”) and the overlapping USPTO delay provision of 35 U.S.C. § 154(b)(2)(A).

Under 35 U.S.C. § 154(b)(1), a patentee is entitled to an extension of patent term for two different types of USPTO delay (i.e., A-delay and B-delay). The Wyeth court held that the USPTO erred in interpreting the § 154(b)(2) as limiting the patentee to the greater of these two types of delay in most situations. Instead, the patentee is entitled to a one-day extension of patent term for any day that falls into either the A-delay or B-delay category.

Accordingly, patentees with patents that have recently issued or that will issue soon may be entitled to a significant addition to the term of those patents.

Patents Issued or Issuing Prior to March 2, 2010

The USPTO recently announced a procedure for requesting a recalculation of patent term adjustment without a fee or petition for issued patents that satisfy the following criteria:

The patent has already issued or will issue prior to March 2, 2010;
The request is made no later than 180 days after the patent’s issue date; and
The request involves only alleged errors in calculation that are specifically identified in the Wyeth case.

The March 2, 2010 date is apparently used as a deadline because the Office expects to complete a software modification necessary to comply with the Wyeth decision by March 2, 2010.

This new procedure may affect a number of recently-issued and soon-to-issue applications. Please contact us as soon as possible if you would like to discuss taking advantage of this procedure.

Patents Issued or Issuing After March 2, 2010

Incorrect PTA calculations are also an issue for applications issuing after March 2, 2010 based on Notices of Allowance mailed prior to that date. For these applications, the initial PTA calculation in the Notice of Allowance may not be performed using the modified software intended to comply with Wyeth. The USPTO may recalculate the PTA for such applications prior to issuing a patent in order to comply with Wyeth.

However, 37 CFR § 1.705 requires that a request for reconsideration of a PTA calculation be filed no later than the payment of the Issue Fee if the request involves issues that could be raised by the date. Moreover, the USPTO’s software modification may be inadequate, may not be completed on time, or may introduce additional errors. Given these legal ambiguities, the reaction of courts to attempts to challenge PTA determinations after issuance is difficult to predict.

Please contact us as soon as possible if you would like to discuss filing a petition to challenge the PTA calculation for any of your applications.