Advertisement

April 24, 2014

Patent Term Adjustment Update - Exelixis v. Kappos

A recent ruling by the Eastern District of Virginia recently found that the United States Patent and Trademark Office (USPTO) had been incorrectly calculating a patent term adjustment statute concerning a Request for Continued Examination (RCE). The District Court’s ruling states that an RCE filed after the 3-year deadline from filing an application has passed should have no impact on patent term adjustment.

Statute 35 U.S.C. 154(b)(1)(B) guarantees adjustment of a patent term if the patent has not issued within three years after the filing date of the application in the United States (i.e., “B-term delay”). If the patent takes longer than three years from the application filing date to grant, the life of the patent is extended one day for each day after the end of the 3-year period until the patent has issued. This 3-year guarantee is subject to the limitation of “any time consumed by continued examination of the application requested by the applicant.” Prior to this decision, the USPTO interpreted the statute to read that the filing of any RCE would preclude any additional B-term delay. Thus, once an RCE was filed, an application would no longer be eligible for any B-term adjustment.

At issue in the Exelixis case was whether or not an application’s patent term adjustment should be reduced by the time attributable to an RCE when the RCE is filed after expiration of the 3-year date from filing. The patent in question, 7,989,622, was filed on January 15, 2008. The 3-year date from filing was thus January 15, 2011. On April 11, 2011, Exelixis filed their first (and only) RCE. On April 27, 2011, the application received a Notice of Allowance and the application issued as a patent on August 2, 2011.

The USPTO awarded the ‘622 patent B-term delay for the period between January 15, 2011 and April 11, 2011. Exelixis argued, however, that the ‘622 patent should be awarded B-term delay from January 15, 2011 until the patent issued on August 2, 2011 because the RCE had been filed after the 3-year date. The District Court sided with Exelixis, ruling that the plain language of the statute states that the time devoted to an RCE tolls the running of the 3-year clock if filed prior to the 3-year date; however, the statute does not address the filing of an RCE after the 3-year date. As such, the District Court ruled that the time consumed by an RCE that is filed after the 3-year date should not be deducted from patent term adjustment. Put simply, if the first RCE that is filed during prosecution of an application occurs after the 3-year date, then B-term delay should not be reduced. Accordingly, the District Court awarded the ‘622 patent the amount of B-delay that occurred from January 15, 2011 until the patent issued on August 2, 2011.

The USPTO has not yet decided whether to appeal the decision; however, if you have a recently issued patent that was delayed by the USPTO for failure to issue within three years of the filing date of the application, you may benefit from a review by patent counsel. 

© Copyright 2014 Armstrong Teasdale LLP. All rights reserved

About the Author

James Heinen, Intellectual Property, Attorney, Armstrong Teasdale, Law Firm
Associate

Jim Heinen, Jr. is a member of the firm’s Intellectual Property practice group. Registered to practice before the U.S. Patent and Trademark Office, his main focus is on the preparation and prosecution of U.S. and foreign patent applications for those in the chemical and biochemical industries.

314-259-4753

About the Author

Derick E. Allen, Intellectual Property, Armstrong Teasdale, law firm
Partner

As a partner in the firm’s Intellectual Property practice group, Derick Allen assists pharmaceutical, chemical and life science-based companies with securing and protecting their intellectual property rights.

314-552-4896

Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.