United States: USPTO Finally Updates Patent Term Adjustment Calculator – Sort Of

In a Federal Register Notice issued May 15, 2014, the USPTO announced that its Patent Term Adjustment (PTA) calculator finally has been updated to implement the changes to the PTA statute embodied in the Technical Corrections Act which was enacted on January 13, 2013, but has not yet been updated to implement the changes required by the Federal Circuit's decision in Novartis v. Lee. The Notice indicates that the USPTO is offering procedures for fee-free requests for recalculation of PTA in very limited circumstances for a very limited period of time, but will not refund fees paid for requests for reconsideration filed previously.

Additional PTA Under the Technical Corrections Act

The most significant substantive change to the PTA statute embodied in the Technical Corrections Act relates to the calculation of the time within which the USPTO must issue a first Office Action in a U.S. national stage application. Before the Technical Corrections Act, the fourteen month clock of 35 USC § 154(b)(1)(A)(ii) did not start running until "the date on which an international application fulfilled the requirements of section 371," including the submission of an executed Inventor Oath/Declaration. The Technical Corrections Act revised this section of the PTA statute to provide that the fourteen month clock starts running on the national stage commencement date. (Please see this article for a discussion of other Technical Corrections Act changes to the PTA statute)

As I wrote previously, we have seen patents entitled to hundreds of days of additional PTA under the revised statute, because the USPTO took so long to issue a Notice of Missing Requirements, which in turn postponed the filing of the executed Inventor Oath/Declaration, and fulfillment of all § 371 requirements.

Although the Technical Corrections Act was enacted on January 13, 2013 and the USPTO published interim rules implementing the PTA changes on April 1, 2013, the USPTO will not start calculating PTA correctly under the amended statute until May 20, 2014. In the Federal Register Notice, the USPTO acknowledges that it "has experienced a significant delay in modifying the computer program used to calculate patent term adjustment," but does not offer any explanation for the delay.

Additional PTA Under Novartis v. Lee

In Novartis v. Lee, the Federal Circuit determined that the USPTO's rules misinterpreted the Request for Continued Examination (RCE) carve-out of the three-year, B delay section of the PTA statute, § 154(b)(1)(B)(i). While the USPTO has interpreted the statute such that no B delay PTA accrues once an RCE is filed, the Federal Circuit determined that "time from allowance to issuance" should "undisputedly" be accounted for in the B delay calculation.

Although this decision was issued on January 15, 2014, the USPTO has yet to change its implementing regulations–let alone update its computer program–and the May 15 Federal Register Notice does not provide any indication of when (or even if) such changes will be made.

Limited Ability to Request Recalculation of PTA

Because of the "significant delay in modifying the computer program used to calculate patent term adjustment," the USPTO is offering a limited option to a limited set of patents seeking additional PTA under the Technical Corrections Act amendments to § 154(b)(1)(A)(ii). In particular, the USPTO is "providing an optional procedure for patentees to request a recalculation of their patent term adjustment without a fee" as long as the following conditions are met:

  • The patent resulted directly from a U.S. national stage application filed under 35 U.S.C. 371
  • The request for recalculation is filed no later than July 31, 2014
  • Recalculation is based only on errors "identified in this final rule"

The USPTO has created this form to be used to make a request for recalculation.

As emphasized in the Federal Register Notice, a request for recalculationunder this procedure is not a request for reconsideration. Thus, the timing and fee requirements for a request for reconsideration do not apply. Moreover, the only PTA issues that can be raised are those relating to the fourteen month A delay calculation for U.S. national stage applications, and, possibly, a Novartis-type B delay issue in a patent that also has the fourteen month A delay issue.

Paying for PTA

Although the "request for recalculation" procedures may be a useful option for some patentees, it leaves a large number of patentees bearing the costs of the USPTO's significant delay in updating its computer program to implement the changes of the Technical Corrections Act. As set forth in the Federal Register Notice, the USPTO will not refund any fees paid to support a request for reconsideration that already has been filed, even if the only issue raised related to the revised version of the statute. That means that the USPTO will keep the $200 per request that it has collected over the past sixteen months, between the enactment of the Technical Corrects Act and the updates to its computer program.

As best as I can tell from the Federal Register Notice, the USPTO has not updated its computer program to reflect the Novartis decision. Although the Federal Register Notice states that the USPTO has begun "to redetermine the patent term adjustment manually for those patentees who have timely challenged their patent term adjustment determination," it does not indicate when the USPTO will revise its implementing rules or update its computer program for this issue. Quite to the contrary, the Federal Register Notice cautions that the USPTO "is notadopting ad hoc procedures for requesting a patent term adjustment recalculation specifically directed to the Federal Circuit decision in Novartis." This means that if a patent is entitled to additional PTA under Novartis, the patentee will have to timely file a request for reconsideration and pay the requisite $200 fee.

Is the USPTO willfully defying the Federal Circuit decision by refusing to implement the court's interpretation of the statute?

Caveat Patentee

That the USPTO took over sixteen months before it started calculating PTA under the Technical Correction Act and has not yet advised the public on how and when it will implement the Federal Circuit decision in Novartis underscores the fact that patentees cannot rely on the USPTO to properly calculate PTA. Patentees who want to ensure that their patents are awarded their full amount of PTA must take it upon themselves to calculate the PTA due under the current version of the PTA statute (as interpreted by binding judicial interpretations), and request reconsideration when the USPTO's calculation comes up short.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions