PTA Post Wyeth

Presentation Transcript

Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010)

OPLA - Kery A. Fries

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

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

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)

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

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)

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)

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

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

PTO/SB/131 Form

10

PTO/SB/131 Form (cont.)

11

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

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

Example 1 Timeline

No overlap between A and B

PTA= 585 + 241 + 0 - 0 - 95 = 731

5/17/07

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

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

Example 2 Timeline

Overlap between A and B = 24 days

PTA= 694 + 241 + 0 - 24 - 122 = 789

“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

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

Example 3 Timeline

Overlap between A and B = 0 days

PTA= 612 + 1097 + 212 - 0 - 0 = 1921

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