In a recent case (Wyeth v. Kappos), the Federal Circuit issued an opinion concerning how Patent Term Adjustment (PTA) should be calculated. The USPTO’s method of calculating PTA will now be revised based on the new standard. The result favors patent owners, and will typically lead to greater length patent terms in the future. Owners of previously issued patents may be able to secure amended calculations of PTA conforming to the new standard.
As background, PTA is a process by which additional time is added to the standard patent term of 20 years from the earliest priority date when the USPTO causes undue delays during prosecution of the patent application. PTA is normally calculated by the USPTO after the application has been allowed. The two most common reasons behind adjusting the term of a patent are that the USPTO has not provided “prompt” responses (A-delay) and that the application pendency exceeded three years (B-delay). PTA is subject to an overlap limitation whereby if A-delay periods overlap with B-delay periods, the larger of the two controls.
Previously, the USPTO recognized overlap anytime both A-delay and B-delay occurred, reasoning that the B-delay guarantee started with the patent application date rather than three years later. The Federal Circuit’s new interpretation holds that the B-delay guarantee begins three years after the filing date, effectively limiting overlap to only those instances in which A-delay occurs more than three years from the filing date.
Because the effect of the new interpretation is to add patent term in cases where the USPTO miscalculated, patent owners should consider whether they may be eligible for additional PTA under the new standard. The USPTO recently announced guidelines regarding requests for recalculation of PTA in light of the revised standard. According to the guidelines, the USPTO will recalculate patent terms for free for patents issued prior to March 2, 2010, and for which a request is made no later than 180 days after issuance.
Please contact us if you have any questions regarding PTA or would for us to request review of previous PTA calculations for issued patents.