USPTO Announces Interim Procedure for Patentees to Request Patent Term Adjustment Recalculation

The United States Patent and Trademark Office (“USPTO”) is providing patentees with the ability to request a recalculation of their patent term adjustment without a fee or petition as is normally required pending completion of necessary modifications to the USPTO’s computer program for calculating patent term adjustments.

The agency expects to complete by March 2, 2010, the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit’s recent decision in Wyeth v. Kappos,  no. 2009-1120 (Fed. Cir., January 7, 2010) regarding the overlapping delay provision of 35 USC 154(b)(2)(A).  In the meantime, the USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date.

According to the USPTO, this procedure is available only for alleged errors in calculation that are specifically identified in Wyeth.  “The USPTO is working to modify its computer program to comply with the Federal Circuit’s decision as soon as possible,” said Commissioner for Patents Robert Stoll.  “Until then, this interim procedure will enable patentees to request a recalculation quickly and at no charge.”

The USPTO explained that an applicant is entitled, subject to certain conditions and limitations, to patent term adjustment if (1) the USPTO fails to take certain actions during the examination and issue process within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; and (3) for delays due to interference, secrecy order, or successful appellate review.

By way of background, under 35 U.S.C. 154(b)(1), an applicant is entitled (subject to certain conditions and limitations) to patent term adjustments for the following reason: (1) if the USPTO fails to take certain actions during the examination and issue process within specified time frames (35 U.S.C. 154(b)(1)(A)), which are known as the “A” delays; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application (35 U.S.C. 154(b)(1)(B), which are known as the “B” delays; and (3) delays due to interference, secrecy order, or successful appellate review (35 U.S.C. 154(b)(1)(C), which are known as the “C” delays. 35 U.S.C. 154(b)(2)(A) provides that “(t)o the extent that periods of delay attributable to grounds specified in (35 U.S.C. 154(b)(1)) ) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.”

The USPTO interpreted this provision as covering situations in which a delay by the USPTO contributes to multiple bases for the adjustment.  The U.S. Court of Appeals for the Federal Circuit, however, held in Wyeth that the USPTO’s interpretation of 35 U.S.C. 154(b)(2)(A) was too strict, and that periods of delay overlap under the 35 U.S.C. 154(b)(2)(A) only if the periods which measure the amount of adjustment under 35 U.S.C. 154(b)(1) occur on the same calendar day.

In this regard, the USPTO is in the process of revising the computer it uses to calculate the patent term adjustment to calculate overlapping delays consistent with the Wyeth ruling relating to 35 U.S.C. 154(b)(2)(A).  The USPTO expects the revision to the patent term adjustment computer program to be in place for use on the patents issuing on March 2, 2010.

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