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Federal Circuit Rules Against PTO’s Interpretation of Patent Term Adjustments
By Gary Pong – Edited by Dmitriy Tishyevich

Wyeth and Elan Pharma Int’l Ltd. v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010).
Slip Opinion

The Federal Circuit affirmed the District Court for the District of Columbia, which had granted summary judgment for the plaintiffs, and held that they were “entitled to extended patent term adjustments under 35 U.S.C. § 154(b) due to the Patent and Trademark Office’s (“PTO’s”) delay in prosecuting their patent applications.”

In promulgating 37 C.F.R. § 1.703(f), the PTO had interpreted § 154(b) as limiting the length of patent term adjustments to the greater of the statutory delay periods, without the possibility of ever combining the two.  The Federal Circuit concluded that this reading was “contrary to the plain language of the statute,” and declined to afford Chevron deference to the agency’s interpretation, holding that the PTO “does not have authority to issue substantive rules, only procedural regulations regarding the conduct of proceedings before the agency.”

Patent Docs provides an overview of the case.  In another article, Patent Docs also provides insight into the PTO’s future course of action.  Patent Prospector features a thorough analysis of the judicial opinion.

In 1994, the effective term of a patent was changed to twenty years from the date of filing from the previous term of seventeen years from the date of issuance.  With the change, delays by the PTO after filing and during prosecution resulted in patents receiving a shorter term than the previously available seventeen years.  The American Inventors Protection Act amended 35 U.S.C. § 154(b) in 1999 to address this problem.

As amended, § 154(b) guarantees that a new patent term would be at least as long as the previous seventeen-year term through two mechanisms of adjustment for PTO-caused delays.  The  § 154(b)(1)(A), guarantees prompt responses from the PTO and extends the term of the patent for every day of delay caused by the PTO’s failure to meet certain statutory deadlines.  Section 154(b)(1)(B) guarantees that a patent application will take no longer than three years to issue, and extends the term of the patent for every day of delay beyond the initial three years after filing.  Both § 154(b)(2)(A) and (B) are subject to the § 154(b)(2)(A) restriction, which limits the period of adjustment to the actual number of days by which the issuance of the patent was delayed when any of the statutory delay periods overlap.

In the instant case, the plaintiffs’ U.S. Patent No. 7,179,892 was granted 345 days after the third year of filing, resulting in 345 days of (B) delay.  During the prosecution of the patent, the PTO had also caused 610 days of A delay.  Of these 610 days, 51 days of delay occurred more than three years after the application was filed.  During this process, the applicant had also caused 148 days of delay.  The plaintiffs argued that under § 154(b)(2)(A), the appropriate patent term adjustment was 756 days, calculated as follows:  610 ((A) delay) + 345 ((B) delay) – 51 (overlap) – 148 (applicant delay).

Under PTO’s interpretation of “period of delay” in § 154(b)(2)(A), however, the (B) delay is “the entire period during which the application was pending before the [PTO] . . . , and not just the period beginning three years after the actual filing date of the application.”  It reasoned that the (A) delay had caused the (B) delay, and so the two had “overlapped” in that sense.  On this view, it calculated the adjustment at 462 days as follows:  610 (the greater of (A) delay or (B) delay) – 148 (applicant delay).

The Federal Circuit rejected the PTO’s interpretation.  It noted that the (A) and (B) clauses expressly designate when and for what period they each apply, and that under the plain language of the statute, the (B) delay period may not start until three years after the filing date of the application – rather than anytime after the application is filed, as PTO had argued.  The court held that no overlap can occur before the three-year mark, and the only possible overlap under § 154(b)(2)(A) is any (A) delay occurring after three years.  It quoted with approval language from the district court’s opinion that “The problem with the PTO’s interpretation is that it considers the application delayed under [the (B) guarantee] during the period before it has delayed” (emphasis in original).  The court recognized that its interpretation of the statute may result in some imbalanced treatment of similarly-situated patentees.  Nevertheless, it said that “the law has put a policy in effect that this court must enforce, not criticize or correct.”

Posted On Jan - 14 - 2010 Comments Off

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