Transcript PTA Post Wyeth

PTA Post Wyeth
USPTO
PTA Post Wyeth
Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010)
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
PTA Post Wyeth
USPTO
• On January 7th, 2010 Federal Circuit decided
Wyeth v. Kappos
• Federal Circuit determined the statutory
construction of 35 USC 154(b)(2)(A)
• Federal Circuit determined that the phrase
“to the extent that periods of delay
attributable to grounds specified in
paragraph (1) overlap…” means same
calendar days
• Accordingly, “A” delays and “B” delays
overlap only if such delays occur on the
same calendar day
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
PTA Post Wyeth
• Federal Circuit decision means that some
patentees may be receiving more patent
term adjustment under the CAFC
interpretation than under the USPTO
interpretation of 35 USC 154(b)(2)(A)
• USPTO is modifying the computer program
to be consistent with the Wyeth decision
• USPTO is deciding petitions consistent with
the interpretation of Wyeth v. Kappos
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
PTA Post Wyeth
• The USPTO created an expedited
procedure to address Wyeth-only
petitions
• USPTO form (PTO/SB/131) is for
requesting reconsideration of PTA when
the sole basis for the request is Wyeth v.
Kappos
• The USPTO form PTO/SB/131 provides that
a patentee need not request reconsideration
under 37 CFR 1.705(d) or pay the fee under
37 CFR 1.18(e)
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Eligibility for expedited procedure:
• Any patent issued before March 2, 2010 that
was not issued more than 180 days before
the request for recalculation in view of
Wyeth was filed
• An applicant eligible to file the form need
not submit a petition and accompanying fee
under 37 CFR 1.183 if the patent issued
more than 2 months but less than 180 days
before the filing of the form
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Eligibility for expedited procedure: (cont.)
• A patentee can also use PTO/SB/131 if the
request for recalculation is more than 180
days after the grant of the patent but (1)
within two months of a decision by the
Office and (2) the sole basis for review of
the decision is pre-Wyeth interpretation of
the statutory language of 35 USC
154(b)(2)(A)
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Eligibility for expedited procedure: (cont.)
• The Office will decide a request for
reconsideration of patent term adjustment
under 37 CFR 1.705(d) even if the decision
date is more than 180 days after grant of
the patent if:
–patentee filed a timely request for
reconsideration of patent term adjustment
under 37 CFR 1.705(d) and no decision
has been rendered by the USPTO (no
PTO/SB/131 form should be filed)
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Fee Waivers
• The Office cannot refund petition fees in
patents where the patentee filed the fee
pursuant to:
–37 CFR 1.705(d),
–37 CFR 1.705(d) in combination with a
petition under 37 CFR 1.183, or
–Request to invoke supervisory authority
under 37 CFR 1.181
• The fee waiver(s) are only applicable to
requesters who use the PTO/SB/131 form
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Ineligibility , Alternative Option
• The Office will not entertain any other
request for reconsideration of PTA under 37
CFR 1.705, 37 CFR 1.181, 1.183, 1.322, or
1.323 filed more than 180 days after patent
grant
• The procedure is an alternative remedy to
35 USC 154(b)(4). Patentees continue to
have the statutory option to file a civil
complaint in the District Court of the District
of Columbia within 180 days of the patent
grant
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
PTO/SB/131 Form
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
PTO/SB/131 Form (cont.)
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 1 Post Wyeth (Facts)
USPTO
• USPTO mails NF rejection on 2/22/07
PTA Post Wyeth
• Application filed under 35 USC 111(a) on 5/17/04
• No “C” delays
• RCE filed on 1/14/08
• No deductions under 37 CFR 1.703(b)(1)-(4)
• Applicant delay is 95 days
• Patent issues on 9/1/ 2009
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 1 Post Wyeth (Calculation)
USPTO
• “A delays” 585 days (beginning on 7/18/05-2/22/07)
• “B delays”= “BNet”=241 days
• “Bmax”=241 days (beginning on 5/18/07-1/13/08)
PTA Post Wyeth
• “BDeductions” = 0 days
• “BNet” =“Bmax-BDeductions” 241-0=241 days
• “A” delays and “B” delays overlap=0 days (no
calendar days in common)
• Total PTA = “A Delays” + “B” +”C” – (overlapping
delays between A and b and A and C)- Applicant
delays
• 585 + 241+ 0 –(0) -95=731 days
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 1 Timeline
PTA Post Wyeth
USPTO
No overlap between A and B
5/17/07
PTA= 585 + 241 + 0 - 0 - 95 = 731
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 2 Post Wyeth (Facts)
USPTO
• Application filed under 35 USC 111(a) on
6/12/02
• USPTO mails NF rejection on 7/6/05
PTA Post Wyeth
• RCE filed on 2/9/06
• No “C” delays
• No deductions under 37 CFR 1.703(b)(1)(4)
• Applicant delay 122 days
• Patent issues on 9/1/2009
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 2 of Post Wyeth (Calculation)
PTA Post Wyeth
USPTO
• “A” delays =694 (8/13/03-7/6/05)
• “B” delays = “BNet”=241 days
• “Bmax”= 241 days (6/13/05 - 2/8/06)
• “Bdeductions” = 0 days
• “Bnet” = “Bmax”-”B deductions”= 241-0=241 days
• Overlapping between A and B=24 days (6/13/05 7/6/05)
• Total= “A”+ “B” + “C”- (overlapping between A and B
and A and C) – applicant delay
• Total = 694+241+0 (-24) -122=789 days
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Example 2 Timeline
Overlap between A and B = 24 days
PTA= 694 + 241 + 0 - 24 - 122 = 789
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 3 Post Wyeth (Facts)
PTA Post Wyeth
USPTO
• Application filed under 35 USC 111(a) on 2/1/02
• USPTO mails NF rejection on 12/3/04
• “C” delays for successful appellate review (notice of
appeal filed 8/2/05 and Bd. Decision mailed on
3/1/06)
• Deductions under 37 CFR 1.703(b)(1)-(4)for period
beginning on 8/2/05 and ending on 3/1/06
• NO RCE
• No Applicant delays
• Patent Issues on 9/2/08
OPLA - Kery A. Fries
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United States Patent and Trademark Office
Example 3 Post Wyeth (Calculation)
USPTO
• “A” delays= 612 days
• “B” delays= “Bnet”=1097 days
• “Bmax”= 1309 days (2/2/2005- 9/2/08)
PTA Post Wyeth
• “B deductions” = 212 days (8/2/05-3/1/06)
• “Bnet” = Bmax- B deductions= 1309-212=1097 days
• “C” delays= 212 days
• Overlapping between “A” and “B”=0 days
• Total= A+ “B” + C- (overlapping between “A and
B” and “A and C”) – applicant delay
• Total= 612 + 1097 + 212 –(0) -0=1921 days
OPLA - Kery A. Fries
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United States Patent and Trademark Office
PTA Post Wyeth
USPTO
Example 3 Timeline
Overlap between A and B = 0 days
PTA= 612 + 1097 + 212 - 0 - 0 = 1921
OPLA - Kery A. Fries
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United States Patent and Trademark Office