On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the substantive changes to the AIA embodied in this law.Continue reading this entry
On January 28, 2013, Judge Brinkema of the U.S. District Court for the Eastern District of Virginia issued a decision in a different Exelixis v. Kappos Patent Term Adjustment (PTA) case (1:12cv574) (Exelixis II) that affirms the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i). Judge Brinkema’s decision in Exelixis II is in direct conflict with the decision issued by her colleague, Judge Ellis, III, in Exelixis v. Kappos (1:12cv96) (Exelixis I) on November 1. 2012. As I wrote previously, the USPTO already has appealed Exelixis I. I expect Exelixis to appeal Exelixis II.Continue reading this entry
The Senate has passed a modified version of HR 6621, which focuses on changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act” and also includes other provisions unrelated to the AIA, such as those impacting Patent Term Adjustment (PTA). The President is expected to sign the bill soon, and it will take effect on the date of enactment, unless otherwise provided.
The AIA Changes
HR 6621 makes several “technical amendments” to the AIA, some simply correcting “scrivener’s errors” and others making more substantive changes.
Inter Partes Review
One of the most significant changes in HR 6621 closes the Inter Partes Review (IPR) “dead zone.” The original IPR statute provides that IPR cannot be requested within the first 9 months of a patent’s grant date. This time period will complement the time period for Post Grant Review (PGR), once PGR is available because PGR only can be requested within 9 months of a patent’s grant date. But, PGR only is available against certain business method patents and patents examined under the first-to-file version of 35 USC § 102, which does not take effect until March 16, 2013. Thus, under the original IPR statute, patents granted now cannot be challenged in an inter partes USPTO proceeding until they have been in force for 9 months.
HR 6621 eliminates this “dead zone” by providing that the 9-months-from-grant requirement does not apply to patents that are not examined under the first-to-file version of 35 USC § 102. (Congress does not shy away from double negatives!)
HR 6621 also eliminates a similar “dead zone” for reissue patents, by providing that the 9-months-from-grant requirement does not apply to reissue patents.
HR 6621 changes the time period for filing an executed inventor’s oath/declaration (or substitute statement) from “by allowance” to “no later than the date on which the issue fee .. . paid.” This will greatly simply allowance procedures, and will permit the USPTO to issue a Notice of Allowance even when an executed inventor’s oath/declaration has not yet been filed.
Advice Of Counsel
HR 6621 provides that the section of the AIA deeming that evidence of any failure to obtain “advice of counsel” cannot be used to establish willfulness or intent to induce infringement apply to “any civil action commenced on or after the date of enactment” of HR 6621.
HR 6621 clarifies the deadline for bringing a derivation proceeding, and provides that such a proceeding must be brought within one year of the publication or grant of a relevant claim in the earlier-filed application. This is consistent with how the USPTO had interpreted the original language of the derivation statute.
HR 6621 also defines “earlier application” and re-writes much of the derivation statute in terms of the “earlier application.”
HR 6621 clarifies that the USPTO Patent Trial and Appeal Board (PTAB) and Federal Circuit can hear appeals of interferences commenced after the effective date of the AIA’s amendments to § 135(a).
Patent Term Adjustment Provisions
HR 6621 includes the changes to the Patent Term Adjustment statute that I discussed in this article, including changes that I think may be problematic.
In his speech providing a “section-by-section summary” of HR 6621, Rep. Lamar Smith expressed his views that the district court decision in Exelixis v. Kappos (which I wrote about here) will cause “absurd and undesirable results” that will undermine Congressional goals in adopting a 20-year patent term. (The USPTO has appealed the Exelixis decision.)
Pending, Unpublished Pre-GATT Patent Applications
As I wrote previously, HR 6621 was amended to eliminate the controversial provisions that effectively would have eliminated the term of pending, unpublished pre-GATT patent applications, and instead would have required the USPTO to issue a report on such applications. The Senate took that revision one step further and removed all provisions relating to pre-GATT patent applications.
Effective Date of HR 6621
The default effective date of HR 6621 is its date of enactment, and it will apply “to proceedings commenced on or after” that date, except where it states otherwise.
More Changes Ahead?
In his speech providing a “section-by-section summary” of HR 6621, Rep. Lamar Smith indicated that further changes to the AIA may be under consideration. In particular, he indicated that Congress is considering changing the “raised or could have been raised” PGR estoppel provisions. Additionally, Congress clearly wants to address the problem of pending pre-GATT applications, which is discussed in more detail in this article.
Although most of HR 6621 (introduced by Rep. Lamar Smith on Nov. 30, 2012) would make changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act,” the bill includes other provisions that are entirely unrelated to the AIA and that would dramatically impact patent term. The provision receiving the most public attention would eliminate the term of patent applications filed before June 7, 1995 (“pre-GATT applications”) that are still pending. But another provision would affect all pending and new applications, as well as recently granted patents, by changing the way that Patent Term Adjustment (PTA) is calculated and challenged under 35 USC § 154(b). Continue reading this entry
In a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia has found that the USPTO’s interpretation and application of the “RCE carve-out” provision of the Patent Term Adjustment (PTA) statute is contrary to law. Although I wrote about some “RCE carve-out” challenges just last week, the decision here reaches an even broader interpretation of the statute.
Under the district court’s interpretation, 35 USC § 154(b)(1)(B)(i) only comes into play if a Request for Continued Examination (RCE) is filed within the three-year period from the application’s filing date. Under this interpretation, a significantly greater number of patents may be entitled to significantly greater PTA awards. It is too early to know whether the USPTO will appeal this decision. In the meantime, patent holders with affected patents may wish to consider pursuing additional PTA in a Request for Reconsideration filed with the USPTO or in a district court proceeding, if the deadline for pursuing such an action has not passed.Continue reading this entry
In an August 16, 2012 Federal Register Notice, the USPTO announced final rules that change the way that Patent Term Adjustment (PTA) will be calculated after a Notice of Appeal has been filed. The final rules generally follow the rules that were proposed in December of 2011 and treat “appellate review” for PTA purposes as commencing when jurisdiction over a patent application passes to the Board. According to the Federal Register Notice, new PTA deductions will apply to patent applications in which a Notice of Appeal is filed on or after September 17, 2012, and the new PTA calculations will be applied to patent applications in which a Notice of Allowance is issued on or after September 17, 2012. Other patentees may be able to benefit from the rule changes if they can file timely requests for reconsideration of the PTA awarded to their patents under the current rules. Continue reading this entry
In a Federal Register Notice issued December 28, 2011, the USPTO announced that it is considering changes to the Patent Term Adjustment (PTA) rules relating to “appellate review by the Board.” I have written previously about the post-Notice of Appeal gap left by the current PTA rules, and believe that these new proposed changes would go far to close that gap, although they will not benefit all applications on appeal. The USPTO will accept written comments on these proposed rule changes through January 27, 2012. Continue reading this entry
In a Federal Register Notice issued December 1, 2011, the USPTO issued a final rule that tweaks the patent term adjustment rules to permit applicants to promptly file McKesson-type Information Disclosure Statements (IDSs) without incurring a patent term adjustment deduction. The rule change took effect on December 1, 2011.
(The Federal Register Notice indicates that previously proposed changes to the calculation of patent term adjustment when the USPTO reopens prosecution after a Notice of Appeal are being revised and will be published for comment separately.) Continue reading this entry
Barely two weeks after vacating the decision of the USPTO Board of Patent Appeals and Interferences in In re Leithem as being based on a new ground of rejection, the Federal Circuit took similar action in In Re Stepan Co. While the Board in Leithem had relied on different characterizations of the cited prior art references, the Board in Stepan had discredited a Rule 1.131 Declaration that the Examiner had not questioned on the merits. Hopefully the Board will take these decisions seriously and reverse examiner rejections it finds inadequate instead of trying to reformulate them on appeal.
The recent Federal Circuit decision in In re Leithem highlights what some practitioners believe is a growing problem with decisions from the USPTO Board of Patent Appeals and Interferences: the Board’s practice of “affirming” a rejection based on a new ground of rejection. The court soundly criticized this practice when it vacated and remanded the Board decision “to allow appellants a full opportunity to respond to the new rejection.”
Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applicaitons, they are sympathetic but note that they have a long “special new” docket and are focusing on even older applications under the USPTO’s COPA (Clearing Oldest Patent Applications) program. For a few extreme cases I have used the USPTO Ombudsman program to see if the Ombudsmen have any ideas.
In an action that has advanced to the summary judgment stage, ArQule, Inc. is challenging the PTO’s practice of charging “applicant delay” when a response is filed on the next business day after a deadline that fell on a Federal holiday. While a decision in ArQule’s favor could impact numerous patents, the single day at issue is not likely to spawn an onslaught of litigation.
On April 6, 2011, the USPTO announced proposed changes to the Patent Term Adjustment (PTA) rules that would award PTA for USPTO delay when an examiner reopens prosecution after a notice of appeal has been filed. While I have written previously about the gap left by the USPTO’s current PTA rules, I am afraid that the new proposal raises more problems than it solves.
Yet another complaint has been filed against the USPTO challenging Patent Term Adjustment. The issue raised in Oncolytics Biotech Inc. v. Kappos is whether a deficient Office Action that was subsequently vacated by the USPTO nevertheless satisfied the USPTO’s obligation to take action within four months of the applicant’s previous reply.
Although it has been over a year since the Federal Circuit decision in Wyeth v. Kappos, Wyeth-related Patent Term Adjustment (PTA) problems continue. One issue raised in several pending district court cases is whether a patentee can invoke the doctrine of equitable tolling to bring a civil action more than 180 days after the patent was granted. Schering v. Kappos raises this issue in the starkest terms, because Schering never sought reconsideration of the PTA award at issue. It will be interesting to see how the court resolves this case, and whether it opens the door for other patent holders to obtain the full patent term due under the statute.
On December 8, 2010, the USPTO launched an Extended Missing Parts Pilot Program that will permit applicants to delay payment of search and examination fees (only) for up to 12 months for certain original U.S. non-provisional applications. Applicants who use this program will incur a $130 surcharge and, perhaps more importantly for applicants in pharmaceutical and biotechnology fields, will be charged with "applicant delay" under the Patent Term Adjustment rules.
Since the Federal Circuit decision in Wyeth v. Kappos, we have been applying greater scrutiny to the USPTO’s interpretations of the Patent Term Adjustment (PTA) statute. While we previously reviewed the USPTO’s calculations to ensure that the USPTO delays and Applicant delays were correctly counted in accordance with the rules, we find ourselves more frequently questioning whether the rules themselves are in accord with the statute. Just like the Federal Circuit determined that the USPTO’s interpretation of 35 USC § 154(b)(2)(A) was inconsistent with the statute, I think that the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(ii) improperly excludes time that has nothing to do with an actual appeal to the Board.
Checking the status of a U.S. patent application after you’ve filed a Request for Continued Examination (RCE) can be confusing and disheartening. Even if you’ve filed several responses and conducted an examiner interview, the USPTO’s Patent Application Information Retrieval (PAIR) system will show the status of your application as “Docketed New Case—Ready for Examination.” A telephone call to the examiner is not likely to be more helpful. The examiner probably will remind you that he no longer has a set time period for acting on an application after an RCE is filed, but will promise to get to it “soon.” Since I have several applications languishing in post-RCE purgatory, I asked Andrew Mitchell, our Director of IP Technical Support, if he could pull a report on the RCEs that we have filed since the new RCE docketing procedures took effect, and how long it took for the USPTO to issue the next action.
The USPTO has proposed changes to Missing Parts practice, ostensibly in response to requests to reduce costs that are incurred one year after a provisional application is filed. It is hard to believe that the ability to delay the payment of certain fees would offer any significant relief to applicants. On the other hand, the proposed changes create several traps for the unwary that could impose significant new costs.
The Benefits of the Proposal
Under the proposal, applicants would have to pay the basic filing fee ($330/$165) within the normal time frame, but could delay payment of the search and examination fees (and any excess claim/page fees) until 12 months from the non-provisional filing date. That is, applicants could postpone payment of $890/$445 for up to 12 months without having to pay for extensions of time.
The Costs of the Proposal
Applicants could incur significant costs for being able to keep a few hundred dollars in the bank for a few more months: