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  • Cassandra L. Wilkinson

A Counting Change


January 2010 marked the beginning of a new era for the United States Patent and Trademark Office (USPTO) and for inventors across the world. As a result of this January's ruling handed down by the U.S. Court of Appeals in the case Wyeth v. Kappos, the allocation of patent term adjustments has been significantly altered. The Court's decision in favor of Wyeth and Elan Pharma International Limited, and against the USPTO represented by Under Secretary of Commerce David J. Kappos, signals a paradigm shift to a new standard of accounting for delays incurred throughout the patent application process. Whether it be at airports, in restaurants, or in filing a patent, delays happen. Since the formation of the World Trade Organization (WTO) at the end of the Uruguay Round of worldwide trade negotiations in 1995, there has been an increased necessity for universal intellectual property regulation. With the signing of the 1994 Uruguay Round Agreements Act, one of the first steps in this direction was taken. Under the agreements, patent terms were changed from seventeen years from the date of issue to twenty years from the earliest filing date. While the ratification of this act brought over one hundred countries into accord with regards to intellectual property standards, it also necessitated the U.S. Congress to address the growing problem of the USPTO's slothful response to patent filing. In November of 1999, the American Inventors Protection Act (AIPA) was enacted to help assuage some of these concerns. 35 U.S.C. §154 granted inventors the right to have their patents' terms extended in the event of any delays caused by the USPTO. Such delays are placed into three categories: 1) Delays as a result of the USPTO's failure to meet specified deadlines (A delays); 2) Delays caused by the USPTO's inability to issue a patent within three years after the actual filing date of the application in the United States (B delays); and 3) Delays due to interferences, secrecy orders, and appeals (C delays). The aforementioned court case, Wyeth v. Kappos, dealt with the interpretation of 35 U.S.C. §154(b) as it pertains to how much patent term adjustment a patent should receive when it is subject to overlapping delays. As is stated in 35 U.S.C. §154(b), each category of delay is guaranteed a specific allotment of term adjustment. In the event of an A delay, “the term of patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.” When a B delay occurs, “the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.” Finally, if a C delay takes place, “the term of the patent shall be extended 1 day for each day of the pendency of the proceedings, order, or review, as the case may be.” Wyeth, the plaintiff, argued that the USPTO had under calculated the length of term adjustments resulting from overlapping A and B delays on several of its patents. The USPTO, the defendant, argued, on the other hand, that under its interpretation of 35 U.S.C. §154(b), the length of the term adjustments on Wyeth's patents were warranted. In district court, the ruling on summary judgment was in favor of Wyeth. The USPTO then appealed, but was denied victory when the U.S. Court of Appeals affirmed the lower court's ruling. The court found that “Section 154(b)'s language is clear, unambiguous, and intolerant of the PTO's suggested interpretation.” With the conclusion of this case, the USPTO has been assigned the duty of recalculating numerous patent term adjustments that were previously miscalculated as a result of its flawed interpretation of 35 U.S.C. §154(b). According to interim procedure, the USPTO will recalculate the patent term for free for any patent issued prior to March 2, 2010 so long as the request for recalculation is submitted within 180-days of issue. Any request for recalculation that is to be made must only, however, be for the purpose of correcting overlap issues congruent to those in the Wyeth case.

#USPTO

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