Seed Intellectual Property Law Group PLLC

Patent Term Adjustment Changes, Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010)

The Federal Circuit Court recently affirmed a lower court decision (see Wyeth v. Dudas, 88 U.S.P.Q.2d 1538 (D.C. Cir. 2008)) that the U.S. Patent and Trademark Office (PTO) has been incorrectly calculating delays by the PTO that resulted in greater than three (3) year pendency of an application before issuance.  Wyeth and Elan Pharma International Limited v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010).

In the United States, the term of a patent is adjusted for certain delays by the PTO during prosecution of the patent application (“Part A delays”).  The statutory provisions also guarantee that a patent will grant within three (3) years from the filing date of the application and provide for additional adjustment of term for any period of pendency over three (3) years (“Part B delay”).  However, any adjustment for Part A and/or Part B delays is reduced for certain delays in prosecution attributable to the applicant.  Any such adjusted term is shown on the face of an issued U.S. patent and is referred to as Patent Term Adjustment (PTA). 

In the above noted case, the Federal Circuit Court found that the PTO has been incorrectly calculating the Part B delay.  In essence, the PTO was not providing credit for delays in prosecution during the first three (3) years to the extent those delays contributed to application pendency greater than three (3) years.  Under the correct calculation, day-by-day credit will now be received for certain PTO-caused prosecution delays during the first three (3) years of pendency of the application, in addition to credit for pendency over three (3) years (both of which may be reduced by certain applicant-caused delays).

Therefore, a patent that issued more than three (3) years after its filing date may be entitled to a longer PTA.  If the PTO’s calculation is incorrect, to receive the correct term you may either (1) file a petition with the PTO if within two (2) months of grant; or (2) file suit with the Federal District Court for the District of Columbia if within 180 days of grant.

Additionally, many patent owners may have patents that issued more than 180 days ago that would be eligible for additional PTA except for the miscalculation by the PTO.  The PTO has not yet provided any comment regarding such patents.  However, at least one patentee has filed a complaint against the Director, asserting that “[the District Court for the District of Columbia’s] decision in Wyeth v. Dudas constituted a change in the law sufficient to invoke the doctrine of equitable tolling to allow for the filing of this complaint at this time.”  The doctrine of equitable tolling preserves a plaintiff’s claims when strict application of the statute of limitations (in this instance, 180 days from date of grant) would be inequitable.

The PTO has announced that it will conform to the Federal Circuit Court’s decision and is in the process of changing its calculation methods.  A revised computer program is expected to be in operation for patents that issue on or after March 2, 2010.  The PTO has also established interim, optional procedures for a patentee to request recalculation of patent term adjustment without a fee as an alternative to petition and fee as required by 37 C.F.R. § 1.705(d).  A form may be submitted no later than 180 days after the patent issued, and the patent must have issued prior to March 2, 2010.  For additional details see the USPTO web site:

(Interim Procedure for Patentees to Request a Recalculation of the Patent Term Adjustment to Comply with the Federal Circuit Decision in Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C. § 154(b)(2)(A), dated January 26, 2010).

Please contact us if you have any questions regarding PTA or other matters.