This an important notice of a case affecting the term of patents issuing from most patent applications in which an RCE (Request for Continued Examination) has been filed. Any allowed application, in which the issue fee has not yet been paid, should be re-reviewed to redetermine if an application for Patent Term Adjustment (PTA) should be filed before payment of the issue fee. Any patent issued by the United Stated Patent and Trademark Office (USPTO) within the last 180 days should be reviewed to determine if the USPTO improperly reduced the patent’s PTA. In Exelixis, Inc. v.Kappos, (E.D. Va. 11/1/2012), Judge Ellis held that “RCE’s have no impact on PTA [Patent Term Adjustment] if filed” more than three years after the patent application is filed. PTA is that period of application pendency time, determined by the USPTO, pursuant to statute, that is added to the base 20 year patent term, due to delays in issuance of the patent. The Court’s decision makes clear that calculating PTA, by subtracting therefrom, application pendency time occurring more than 3 years after the actual filing date of the application in the United States, due to the filing of an RCE, is generally not in accordance with law. However, the USPTO has been routinely calculating PTA by subtracting application pendency time occurring more than 3 years after the actual filing date of the application in the United States, due to the filing of an RCE. Judge Ellis concluded that 35 USC 154(b)(1)(B), titled “GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY” meant what the title said. That the USPTO had to issue an application within 3 years of filing, and if not, the USPTO had to add the application pendency delay in issuance beyond the first 3 years, to the base patent term of 20 years from filing date. Judge Ellis is very knowledgeable in US patent law, and therefore it is likely that his conclusion will be affirmed, if appealed. What 35 USC 154(b)(1)(B) says, in relevant part, is that:
…if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including- (I) any time consumed by continued examination of the application requested by the applicant under section 132(b) [sic; filing an RCE] …, the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.
Judge Ellis concluded that the “not including” referred back to the “within 3 years after the actual filing date of the application in the United States” and therefore only applied to the first three years after the application was filed. The USPTO had, by rule 37 CFR 1.703(b)(1), been subtracting from PTA “(1) The number of days, if any, in the period beginning on the date on which a request for continued examination [RCE] of the application under 35 U.S.C. 132(b) was filed and ending on the date the patent was issued.” This rule’s “ending” date is not consistent with the Court’s conclusion that 35 USC 154(b)(1)(B) specifies subtracting only the time period ending on the date 3 years from the actual filing date of the application in the United States. By rule, an applicant can only contest the USPTO’s pre-issuance determination of PTA prior to paying the issue fee. 37 CFR 1.705(b) and (d). By statute, an applicant can only contest the USPTO’s determination of PTA only within 180 days after issuance of the patent. 35 USC 154(b)(4). Pursuant to changes implemented by the AIA, any civil action based upon 35 USC 154(b)(4) must be filed in the United States District Court for the Eastern District of Virginia. Accordingly, prompt action is required to protect client rights.
Richard Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
Home Page: http://www.Neifeld.com
