Category Archives: Patent Term Adjustment

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District Court Denies Extra Patent Term Adjustment When National Stage Entry Date Falls On A Holiday

Some patent term adjustment (PTA) cases have broad impact–like Wyeth v. Kappos and Novartis v. Lee–but Acetelion Pharmaceuticals, Inc. v. Lee addresses a more esoteric issue: when does the 14-month clock start to run in a U.S. national stage application when the 30-month national stage entry days falls on a Federal holiday? Judge O’Grady of the … Continue reading this entry

Court Can't Review Policy Behind Patent Term Adjustment Statute

In Singhal v. Lee, the U.S. District Court for the Eastern District of Virginia dismissed a complaint that challenged the Patent Term Adjustment (PTA) awarded to two patents, because the complaint failed to state a claim upon which relief could be granted. Ms. Singhal challenged the “RCE carve-out” on policy grounds, but federal courts lack authority to … Continue reading this entry

Patent Term Adjustment Versus Double Patenting

In Magna Electronics, Inc. v. TRW Automotive Holdings Corp., No. 1:12-cv-654; 1:13-cv-324 (Dec. 10, 2015), Judge Maloney of the U.S. District Court for the Western District of Michigan granted TRW’s motion for partial summary judgement of invalidity based on obviousness-type double patenting over a later-granted child patent. While it was only a matter of time before … Continue reading this entry

Incomplete Restriction Requirement Stops Clock For Patent Term Adjustment

In Pfizer v. Lee, the Federal Circuit affirmed the decision of the U.S. District Court for the Eastern District of Virginia that upheld the USPTO’s Patent Term Adjustment (PTA) calculation that stopped the clock running against the USPTO when the examiner issued an incomplete Restriction Requirement. This decision is not surprising, but Applicants should remember that … Continue reading this entry

Federal Circuit Upholds USPTO Post-Wyeth Patent Term Adjustment Procedures

In Daiichi Sankyo Co. v. Lee, the Federal Circuit upheld the USPTO’s post-Wyeth Patent Term Adjustment (PTA) procedures, and found that the USPTO did not abuse its discretion when it limited the Interim Procedures to petitions filed within 180 days of the patent’s grant date. This decision highlights the deferential standard of review applied to USPTO … Continue reading this entry

Examination Delay Earns Patent Term Adjustment Only In One Application

In Mohsenzadeh v. Lee, the Federal Circuit affirmed the district court’s decision that the USPTO’s delay in issuing a Restriction Requirement in a parent application does not earn Patent Term Adjustment (PTA) for the ensuing divisional applications. Thus, while Mr. Mohsenzadeh’s parent application earned 1,476 days of “A Delay” for a late Restriction Requirement, his divisional … Continue reading this entry

Patent Term Adjustment In The Post-RCE Period

We know from Novartis v. Lee  that a patent application does not earn “B delay” type Patent Term Adjustment (PTA) from the time an RCE is filed until a Notice of Allowance is issued, but an application still can earn PTA for “A delay” when the USPTO takes more than four months after the RCE … Continue reading this entry

Federal Circuit Upholds Patent Term Adjustment Deduction For IDS Filed After Restriction Requirement

In Gilead Sciences, Inc. v. Lee, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute as permitting the USPTO to charge “Applicant Delay” when an Information Disclosure Statement (IDS) is filed after a response to a Restriction Requirement has been filed. While I am not surprised by this decision, it … Continue reading this entry

USPTO Issues Final Patent Term Adjustment Rules Under Novartis

The USPTO has published final Patent Term Adjustment (PTA) rules addressing the treatment of Requests for Continued Examination (RCEs) under the Federal Circuit decision in Novartis v. Lee, which I discussed here. The final rules create a new type of deduction for “Applicant delay” that will apply to applications in which an RCE is filed on or … Continue reading this entry

USPTO Proposes Revised Patent Term Adjustment Rules For RCEs Under Novartis

The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination (RCE) has been filed, after the Federal Circuit held in Novartis v. Lee that the USPTO’s original rules were not consistent with the PTA statute. While the proposed rules appear to follow the Federal … Continue reading this entry

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 … Continue reading this entry

Delayed Restriction Requirement Does Not Result In Patent Term Adjustment For Divisional Application

In Mohsenzadeh v. Lee (decided March 19, 2014), the U.S. District Court for the Eastern District of Virginia held that the Patent Term Adjustment (PTA) statute does not provide PTA to a divisional application when the USPTO takes longer than 14 months to issue a Restriction Requirement in the parent application. While this decision is not surprising, … Continue reading this entry

Patent Term Adjustment And Double Patenting

The March 3, 2014 edition of BNA’s Patent, Trademark & Copyright Journal® — Daily Update included an interesting article by Qing (Becky) Lin about “Strategies for Minimizing Patent Term Loss Due to Double Patenting.” I agree with most of Ms. Lin’s suggestions, and wanted to point out a few creative ways to minimize the impact … Continue reading this entry

Federal Circuit Splits The Baby In Patent Term Adjustment Decision

The Federal Circuit issued its decision in the pending Patent Term Adjustment (PTA) appeals, resolving the issues raised in Exelixis I, Exelixis II and Novartis, in a precedential decision issued in Novartis AG v. Lee, Nos. 2013-1160, -1179 (Jan. 15, 2014); see also Exelixis v. Lee, Nos. 2013‑1175, -1198 (Jan. 15, 2014) (per curiam). The court interpreted 35 … Continue reading this entry

District Court Sides With USPTO On Patent Term Adjustment

In Abraxis Bioscience, LLC v. Kappos, Civil Action No. 1:11-cv-00730., (D.D.C. Jan. 08, 2014), Judge Howell of the U.S. District Court for the District of Colombia upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that relates to the impact that a Request for Continued Examination (RCE) has on a PTA award.  This decision … Continue reading this entry

District Court Again Rejects Equitable Tolling For Patent Term Adjustment Case

In Daiichi Sankyo Co. v. Rea (D. D.C. Dec. 3, 2013), the U.S. District Court for the District of Columbia rejected the plaintiff’s arguments that equitable tolling should apply to permit its claim for additional Patent Term Adjustment (PTA) under Wyeth. In so doing, the court followed much of the reasoning in Novartis AG v. Kappos … Continue reading this entry

District Court Upholds USPTO Patent Term Adjustment Deduction For Information Disclosure Statement

In Gilead Sciences, Inc. v. Rea, the U.S. District Court for the Eastern District of Virginia upheld the USPTO Patent Term Adjustment (PTA) rule that provides for a PTA deduction when an applicant files a “supplemental reply or other paper” after a reply has been filed. In the case at issue, the applicant had filed … Continue reading this entry

Applied Biosystems Seeks Patent Term Adjustment For 2007 Patent

On August 21, 2013, Life Technologies, Corp., Life Technologies, Ltd., Applied Biosystems LLC, and Molecular Probes, Inc. (collectively, “Plaintiffs”) brought suit in the U.S. District Court for the Eastern District of Virginia seeking additional Patent Term Adjustment (PTA) for 36 patents owned by and/or exclusively licensed to Plaintiffs. Their case is a long shot for … Continue reading this entry

Act Soon To Obtain Additional Patent Term Adjustment For U.S. National Stage Applications

The AIA Technical Corrections Act made several changes to the Patent Term Adjustment (PTA) statute, including one that could mean additional Patent Term Adjustment for U.S. national stage applications. Although the law was enacted on January 14, 2013, with a default effective date of the same date, the USPTO did not publish its implementing regulations until April 1, … Continue reading this entry

Patent Term Adjustment For Divisional Patents

Most of the Patent Term Adjustment (PTA) cases being filed in the U.S. District Court for the Eastern District of Virginia involve patents issuing from applications in which a Request for Continued Examination (RCE) was filed, and cite the November 1, 2012 decision of Judge Ellis, III in Exelixis. (That decision, and a conflicting decision … Continue reading this entry

Congressman Goodlatte Proposes Patent Reform to Eliminate Section 145 Actions And Exelixis I-Type Patent Term Adjustment

As reported on the House Judiciary Committee website, on May 23, 2013, Congressman Goodlatte (R-Va.) released “a discussion draft of legislation designed to address the ever increasing problem of abusive patent litigation.” This draft legislation comes on the heels of the Patent Abuse Reduction Act of 2013 (S. 1013), which was introduced in the Senate … Continue reading this entry

USPTO Implements Significant Patent Term Adjustment Changes Pursuant To The AIA Technical Corrections Act

On April 1, 2013, the USPTO published an “interim final rule” relating to Patent Term Adjustment (PTA), to implement changes to the PTA statute embodied in the AIA Technical Corrections Act. Although the rule changes have an immediate effective date, the USPTO will consider written comments submitted within 60 days, e.g., by May 31, 2013.… Continue reading this entry

The Patent Term Adjustment Pendulum Swings The Other Way

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 … Continue reading this entry