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PTA Post Wyeth

PTA Post Wyeth. Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010 ). PTA Post Wyeth. On January 7 th , 2010 Federal Circuit decided Wyeth v. Kappos Federal Circuit determined the statutory construction of 35 USC 154(b)(2)(A)

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PTA Post Wyeth

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  1. PTA Post Wyeth Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010) OPLA - Kery A. Fries

  2. PTA Post Wyeth • On January 7th, 2010 Federal Circuit decided Wyeth v. Kappos • Federal Circuit determined the statutory construction of 35 USC 154(b)(2)(A) • Federal Circuit determined that the phrase “to the extent that periods of delay attributable to grounds specified in paragraph (1) overlap…” means same calendar days • Accordingly, “A” delays and “B” delays overlap only if such delays occur on the same calendar day OPLA - Kery A. Fries

  3. PTA Post Wyeth • Federal Circuit decision means that some patentees may be receiving more patent term adjustment under the CAFC interpretation than under the USPTO interpretation of 35 USC 154(b)(2)(A) • USPTO is modifying the computer program to be consistent with the Wyeth decision • USPTO is deciding petitions consistent with the interpretation of Wyeth v. Kappos OPLA - Kery A. Fries

  4. PTA Post Wyeth • The USPTO created an expedited procedure to address Wyeth-only petitions • USPTO form (PTO/SB/131) is for requesting reconsideration of PTA when the sole basis for the request is Wyeth v. Kappos • The USPTO form PTO/SB/131 provides that a patentee need not request reconsideration under 37 CFR 1.705(d) or pay the fee under 37 CFR 1.18(e) OPLA - Kery A. Fries

  5. Eligibility for expedited procedure: • Any patent issued before March 2, 2010 that was not issued more than 180 days before the request for recalculation in view of Wyeth was filed • An applicant eligible to file the form need not submit a petition and accompanying fee under 37 CFR 1.183 if the patent issued more than 2 months but less than 180 days before the filing of the form OPLA - Kery A. Fries

  6. Eligibility for expedited procedure: (cont.) • A patentee can also use PTO/SB/131 if the request for recalculation is more than 180 days after the grant of the patent but (1) within two months of a decision by the Office and (2) the sole basis for review of the decision is pre-Wyeth interpretation of the statutory language of 35 USC 154(b)(2)(A) OPLA - Kery A. Fries

  7. Eligibility for expedited procedure: (cont.) • The Office will decide a request for reconsideration of patent term adjustment under 37 CFR 1.705(d) even if the decision date is more than 180 days after grant of the patent if: • patentee filed a timely request for reconsideration of patent term adjustment under 37 CFR 1.705(d) and no decision has been rendered by the USPTO (no PTO/SB/131 form should be filed) OPLA - Kery A. Fries

  8. Fee Waivers • The Office cannot refund petition fees in patents where the patentee filed the fee pursuant to: • 37 CFR 1.705(d), • 37 CFR 1.705(d) in combination with a petition under 37 CFR 1.183, or • Request to invoke supervisory authority under 37 CFR 1.181 • The fee waiver(s) are only applicable to requesters who use the PTO/SB/131 form OPLA - Kery A. Fries

  9. Ineligibility , Alternative Option • The Office will not entertain any other request for reconsideration of PTA under 37 CFR 1.705, 37 CFR 1.181, 1.183, 1.322, or 1.323 filed more than 180 days after patent grant • The procedure is an alternative remedy to 35 USC 154(b)(4). Patentees continue to have the statutory option to file a civil complaint in the District Court of the District of Columbia within 180 days of the patent grant OPLA - Kery A. Fries

  10. PTO/SB/131 Form 10 OPLA - Kery A. Fries

  11. PTO/SB/131 Form (cont.) 11 OPLA - Kery A. Fries

  12. Example 1 Post Wyeth (Facts) • Application filed under 35 USC 111(a) on 5/17/04 • USPTO mails NF rejection on 2/22/07 • RCE filed on 1/14/08 • No “C” delays • No deductions under 37 CFR 1.703(b)(1)-(4) • Applicant delay is 95 days • Patent issues on 9/1/ 2009 OPLA - Kery A. Fries

  13. Example 1 Post Wyeth (Calculation) • “A delays” 585 days (beginning on 7/18/05-2/22/07) • “B delays”= “BNet”=241 days • “Bmax”=241 days (beginning on 5/18/07-1/13/08) • “BDeductions” = 0 days • “BNet” =“Bmax-BDeductions” 241-0=241 days • “A” delays and “B” delays overlap=0 days (no calendar days in common) • Total PTA = “A Delays” + “B” +”C” – (overlapping delays between A and b and A and C)- Applicant delays • 585 + 241+ 0 –(0) -95=731 days OPLA - Kery A. Fries

  14. Example 1 Timeline No overlap between A and B PTA= 585 + 241 + 0 - 0 - 95 = 731 5/17/07 OPLA - Kery A. Fries

  15. Example 2 Post Wyeth (Facts) • Application filed under 35 USC 111(a) on 6/12/02 • USPTO mails NF rejection on 7/6/05 • RCE filed on 2/9/06 • No “C” delays • No deductions under 37 CFR 1.703(b)(1)-(4) • Applicant delay 122 days • Patent issues on 9/1/2009 OPLA - Kery A. Fries

  16. Example 2 of Post Wyeth (Calculation) • “A” delays =694 (8/13/03-7/6/05) • “B” delays = “BNet”=241 days • “Bmax”= 241 days (6/13/05 - 2/8/06) • “Bdeductions” = 0 days • “Bnet” = “Bmax”-”B deductions”= 241-0=241 days • Overlapping between A and B=24 days (6/13/05 -7/6/05) • Total= “A”+ “B” + “C”- (overlapping between A and B and A and C) – applicant delay • Total = 694+241+0 (-24) -122=789 days OPLA - Kery A. Fries

  17. Example 2 Timeline Overlap between A and B = 24 days PTA= 694 + 241 + 0 - 24 - 122 = 789 OPLA - Kery A. Fries

  18. Example 3 Post Wyeth (Facts) • Application filed under 35 USC 111(a) on 2/1/02 • USPTO mails NF rejection on 12/3/04 • “C” delays for successful appellate review (notice of appeal filed 8/2/05 and Bd. Decision mailed on 3/1/06) • Deductions under 37 CFR 1.703(b)(1)-(4)for period beginning on 8/2/05 and ending on 3/1/06 • NO RCE • No Applicant delays • Patent Issues on 9/2/08 OPLA - Kery A. Fries

  19. Example 3 Post Wyeth (Calculation) • “A” delays= 612 days • “B” delays= “Bnet”=1097 days • “Bmax”= 1309 days (2/2/2005- 9/2/08) • “B deductions” = 212 days (8/2/05-3/1/06) • “Bnet” = Bmax- B deductions= 1309-212=1097 days • “C” delays= 212 days • Overlapping between “A” and “B”=0 days • Total= A+ “B” + C- (overlapping between “A and B” and “A and C”) – applicant delay • Total= 612 + 1097 + 212 –(0) -0=1921 days OPLA - Kery A. Fries

  20. Example 3 Timeline Overlap between A and B = 0 days PTA= 612 + 1097 + 212 - 0 - 0 = 1921 OPLA - Kery A. Fries

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