A decision last week by the Court of Appeals for the Federal Circuit interpreted the “patent term adjustment” provision of U.S. patent law to give longer life to many patents that are delayed because of long processing times in the U.S. Patent and Trademark Office (PTO).

Since mid-1995, the expiration date of a patent has been calculated based on the filing date of the first nonprovisional application in the patent’s family. Unfortunately, patents cannot be enforced in court until the PTO approves ("allows") and issues them, and the delay of that start of enforceability because of the PTO’s backlog has consistently increased, going from 19.2 months in FY1995 to 34.6 months in FY2009. Many applications still await a first substantive action by the PTO six years or more after filing. The combined effect of this change and trend is to shorten the enforceable term of patents.

To reduce the impact of these changes on patentees, Congress established a “Patent Term Adjustment” (PTA) provision into the American Inventors Protection Act of 1999. Various provisions in the PTA statute guarantee “prompt” (defined in the statute) responses from the PTO and three-year application pendency, and provide for other adjustments to the expiration date of some patents. For example, each day beyond the stated norms for PTO action and pendency adds a day to the expiration date of the patent. Certain delay by patent applicants is subtracted from the adjustment.

In some situations, the adjustment period for “prompt responses” overlaps with the adjustment period for “overall pendency.” The PTO had interpreted the PTA statute to allow subtraction of overlapping periods. The PTO’s official determinations of PTA numbers for applications have applied this subtraction step over the objection of several public commenters. For example, Professor Irving Kayton, Emeritus Law Professor at the George Mason University School of Law in Arlington, Virginia, wrote papers, lobbied the PTO, and even published an online PTA calculator showing the differences between the interpretations.

Finally, on January 7, 2010, the Court of Appeals for the Federal Circuit decided in Wyeth v. Kappos that the PTO’s PTA interpretation was “strained” and “counter-statutory.” In particular, the subtraction step mentioned above was held to be inconsistent with the law. The effect on particular patents and applications will vary, but in that case, the court’s interpretation gave Wyeth an additional 294 days of term for one of its patents and 230 days for another. The PTO has announced that it will not appeal this case any further.

Patent owners and applicants whose applications have been allowed by the PTO may be entitled to adjustments to the expiration day of their patents beyond the PTA calculated by the PTO. Bingham McHale would be happy to help patent applicants and patent owners determine whether they are entitled to this adjustment and to apply for that correction when appropriate.

The Intellectual Property and Technology team at Bingham McHale is honored to work with its clients to protect the things that make them unique in the marketplace. Please call us if you have something unique to protect.

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