Category Archives: Patent Term Adjustment

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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

Maximizing Patent Term Adjustment Under Exelixis

A number of Patent Term Adjustment (PTA) cases have been filed in the U.S. District Court for the Eastern District of Virginia since the November 1, 2012 decision in Exelixis, Inc. v. Kappos. While most have presented straight-forward fact patterns, one complaint caught my attention because it brings to mind how applicants could manipulate the … Continue reading this entry

House, Senate Pass Changes To America Invents Act And Patent Term Adjustment

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 … Continue reading this entry

USPTO Appeals Exelixis Patent Term Adjustment Decision

As expected, the USPTO has filed a Notice of Appeal in the Exelixis patent term adjustment (PTA) case. As I summarized in this article, in a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia found that the USPTO’s interpretation and application of the … Continue reading this entry

HR 6621 Would Add New Barriers To Patent Term Adjustment (PTA) Appeals

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 … Continue reading this entry

MicuRx Sues USPTO For Patent Term Adjustment Under Exelixis

MicuRx Pharmaceuticals, Inc. appears to be one of the first patent holders to sue the USPTO for additional Patent Term Adjustment (PTA) based on the recent district court decision in Exelixis, Inc. v. Kappos, No. 1:12cv96 (E. D. Va. Nov. 1, 2012). The patent at issue (U.S. Patent 8,178,683, directed to oxazolidinone antibiotic agents) was … Continue reading this entry

District Court Holds That Even A Flawed Office Action Stops The Patent Term Adjustment Clock

In University of Massachusetts v. Kappos, the United States District Court for the District of Colombia held that an Office Action that was “fundamentally flawed” still stopped the Patent Term Adjustment (PTA) clock that was running against the USPTO under 35 USC § 154(b)(2)(A). The court distinguished this case from the Oncolytics case, where it was the … Continue reading this entry

District Court Invalidates USPTO Interpretation Of Patent Term Adjustment RCE Carve-Out

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 … Continue reading this entry

Will Challenges To The USPTO's Patent Term Adjustment RCE Carve-Out Gain Traction?

In a complaint filed October 19, 2012, Biogen Idec MA Inc. joined patent holders such as Exelixis, Inc. and Human Genome Sciences, Inc., who are challenging the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i)). As I wrote previously, I think these challenges may have merit, and patent holders facing similar PTA calculations may want to … Continue reading this entry

USPTO Changes Post-Notice Of Appeal Patent Term Adjustment Rules

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 … Continue reading this entry

A Different Challenge To The Post-Notice Of Appeal Patent Term Adjustment Problem

Deca-Medics, Inc. has filed a complaint in the U.S. District Court for the Eastern District of Virginia challenging a Patent Term Adjustment (PTA) award based on how its patent application was processed after a Notice of Appeal was filed. While I have written about the problem with the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(ii) and the USPTO is … Continue reading this entry

Thanks To Arqule There Is No Need To Rush To Beat A Weekend/Holiday Three Month Filing Deadline

Although 35 USC § 21(b) provides that a response that falls due on a weekend or Federal holiday is timely when filed on the next business day, we often try to file a response before such a deadline because the USPTO has interpreted the relevant provision of the Patent Term Adjustment (PTA) statute as not … Continue reading this entry

Challenging The USPTO's Patent Term Adjustment Calculations For RCEs

Recently several cases have been filed that challenge the USPTO’s Patent Term Adjustment (PTA) calculations in patents where an RCE has been filed. For example, both Exelixis, Inc. v. Kappos (Civ. Action No. 1:12-cv-00574-LMB-TCB) (E.D. Va. May 25, 2012) and Human Genome Sciences, Inc. v. Kappos (Civil Action No. 1:12-cv-00607-GBL-TCB) (E.D. Va. June 1, 2012) raise … Continue reading this entry

USPTO Requests Reconsideration In Patent Term Adjustment Tolling Case

The USPTO has filed a motion requesting reconsideration in Bristol Meyers Squibb Co. v. Kappos, where the U.S. District Court for the District of Columbia found that the statutory deadline for bringing a civil action to challenge the Patent Term Adjustment (PTA) awarded by the USPTO is tolled when the patentee pursues reconsideration of the agency … Continue reading this entry

District Court Finds That Deadline To File PTA Action Was Tolled By Request For Reconsideration

In a decision issued January 27, 2012, in Bristol Meyers Squibb Co. v. Kappos, the U.S. District Court for the District of Columbia found that the statutory deadline for bringing a civil action to challenge the Patent Term Adjustment (PTA) awarded by the USPTO is tolled when the patentee pursues reconsideration of the agency decision. … Continue reading this entry

USPTO Proposes To Close Post-Notice Of Appeal Gap In Patent Term Adjustment Rules

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 … Continue reading this entry

USPTO Tweaks Patent Term Adjustment Rules To Accommodate McKesson-Type IDS Submissions

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 … Continue reading this entry

ArQule Challenges Holiday Deduction From Patent Term Adjustment

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 … Continue reading this entry

Proposed Changes to Patent Term Adjustment Rules--Looking a Gift Horse In The Mouth

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 … Continue reading this entry

Patent Term Adjustment - When Is An Action An Action?

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.… Continue reading this entry

Patent Term Adjustment - Challenging Applicant Delays

Hoffman-La Roche Inc. and Morphosys AG are among the latest patent holders to file a Patent Term Adjustment (PTA) action against the USPTO. Their complaint is somewhat unique in that it challenges the factual basis for PTA deductions based on “Applicant Delay,” rather than challenging the USPTO’s interpretation of the PTA statute.… Continue reading this entry

Patent Term Adjustment - Is Equitable Tolling Available For Wyeth Problems?

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. … Continue reading this entry