By
Donald Zuhn —

In
a press release issued today, the
U.S. Patent and Trademark Office announced that it would be implementing an
interim procedure by which patentees can request Patent Term Adjustment (PTA)
recalculations while the Office revises its procedures to comply with the
Federal Circuit's decision in Wyeth v.
Kappos.  In Wyeth, which was decided on January 7th,
the Federal Circuit affirmed an order by the District Court for the District of
Columbia granting summary judgment in favor of Wyeth, in which the lower court
found that the USPTO had misconstrued 35 U.S.C. § 154(b)(2)(A), and as a
result, had denied Wyeth a portion of the patent term to which it was entitled
(see Patent Docs report).  Last week, the Office posted a notice
on its website stating that the Office and Department of Justice would not be
seeking further review of the Federal Circuit's decision in Wyeth (see "USPTO and DOJ Will Not
Seek Review of Wyeth v. Kappos").

The
press release states that the Office will be:

[P]roviding
patentees with the ability to request a recalculation of their patent term
adjustment without a fee or petition as is normally required pending completion
of necessary modifications to the USPTO's computer program for calculating
patent term adjustments.  The
agency expects to complete by March 2, 2010, the software modification
necessary to comply with the U.S. Court of Appeals for the Federal Circuit's
recent decision in Wyeth v. Kappos regarding the overlapping delay provision of
35 USC 154(b)(2)(A).  In the
meantime, the USPTO will be processing recalculation requests under an interim
procedure that is available to a patentee whose patent issues prior to March 2,
2010, and who requests it no later than 180 days after the issue date.  This procedure is available only for
alleged errors in calculation that are specifically identified in Wyeth.  A copy of the notice submitted to the
Federal Register for publication and the form for patentees to use in
requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.

In
the Federal Register notice mentioned in today's press release, the Office states
that the interim procedure "provid[es] patentees with the ability to
request a recalculation of their patent term adjustment without a fee as an
alternative to the petition and fee required by 37 CFR 1.705(d)."  Section 1.705(d) states that:

If there is a revision to the patent
term adjustment indicated in the notice of allowance, the patent will indicate
the revised patent term adjustment. 
If the patent indicates or should have indicated a revised patent term
adjustment, any request for reconsideration of the patent term adjustment
indicated in the patent must be filed within two months of the date the patent
issued and must comply with the requirements of paragraphs (b)(1) and (b)(2) of
this section.  Any request for
reconsideration under this section that raises issues that were raised, or
could have been raised, in an application for patent term adjustment under
paragraph (b) of this section shall be dismissed as untimely as to those
issues.

Section
1.705(b), which is referenced above, states in part that:

Any request for reconsideration of the
patent term adjustment indicated in the notice of allowance, except as provided
in paragraph (d) of this section, and any request for reinstatement of all or
part of the term reduced pursuant to § 1.704(b) must be by way of an application
for patent term adjustment.  An
application for patent term adjustment under this section must be filed no
later than the payment of the issue fee but may not be filed earlier than the
date of mailing of the notice of allowance.

As
we reported in September, the Office has been advising applicants for several
months that "[r]ather than file an application for patent term adjustment
under 37 CFR 1.705(b) contesting the 37 CFR 1.702(b) [i.e., B-delay] calculation at
the time of the mailing of the notice of allowance, . . . [applicants] may wait
until the time of the issuance of the patent and file a request for
reconsideration of the patent term adjustment pursuant to 37 CFR 1.705(d)"
(see "USPTO Says Some Requests
for PTA Reconsideration Are Premature").  In response to requests for
reconsideration under § 1.705(b), the Office has explained that it "does
not calculate the amount of time earned pursuant to 37 CFR 1.702(b) until the
time of the issuance of the patent," and therefore, has assured applicants
that it "will consider any request for reconsideration of the patent term adjustment
due to an error in the calculation of 37 CFR 1.702(b) to be timely if the
request for reconsideration is filed within two months of the issuance of the
patent."

The
Office warns applicants in the Federal Register notice that it "will deny
as untimely any request for recalculation of patent term adjustment indicated
on a patent that is not filed within
180 days of the day the patent was granted."  (Thus, the interim procedure for requesting PTA recalculation
applies only to patents that issued after August 1, 2009 — i.e., on or after Tuesday, August 4,
2009 — and before March 2, 2010.) 
In contrast with the deadlines set forth in § 1.705(b) and (d), which
are not specified in Title 35, the 180-day deadline discussed in the notice relates
to 35 U.S.C. § 154(b)(4), which states in part that:

An applicant dissatisfied with a
determination made by the Director under paragraph (3) shall have remedy by a
civil action against the Director filed in the United States District Court for
the District of Columbia within 180 days after the grant of the patent.

To
facilitate the process of requesting a PTA recalculation under the interim
procedure, the Office has created a new form (PTO/SB/131) for use in making
such requests.  The form, which will
be made available on the Office's forms page,
can be obtained immediately in the Federal Register notice posted on the
Office's website.

In
addition, for patents in which a request for reconsideration under 37 C.F.R. §
1.705(d) was filed, the notice indicates that:

Patentees who received a decision on a
request for reconsideration of the patent term adjustment indicated in the
patent under 37 CFR 1.705(d) under the USPTO's pre-Wyeth interpretation
of 35 U.S.C. 154(b)(2)(A) may file a request for reconsideration of that
decision if such a request for reconsideration is filed within two months of
the date of the decision on a request for reconsideration (37 CFR
1.181(f)).  If the patentee's sole
basis for requesting reconsideration of the decision is the USPTO's pre-Wyeth
interpretation of 35 U.S.C. 154(b)(2)(A), the request for reconsideration need
only state that reconsideration is being requested in view of the Federal
Circuit's decision in Wyeth (the Request for Recalculation of Patent
Term Adjustment in View of Wyeth form (PTO/SB/131) may also be used for this
purpose).

Interestingly,
the Office explains in the notice that:

[T]he patent term adjustment provisions
of 35 U.S.C. 154(b) are complex, there are numerous types of communications
that are exchanged between applicants and the USPTO during the patent
application process, the PALM system was not originally designed for the
purpose of calculating patent term adjustment as provided in 35 U.S.C. 154(b),
and one or more of the time frames specified in [] 35 U.S.C. 154(b)(1)(A) and
(B) are not met presently in a high percentage of the patents.  In addition, revisions to the patent
term adjustment computer program necessary to calculate overlapping delays
consistent with the Federal Circuit's interpretation of 35 U.S.C. 154(b)(2)(A)
in Wyeth significantly increases the complexity of the patent term adjustment
computer program.

The
Office also notes that "[t]he USPTO is modifying and will continue to
modify the patent term adjustment computer program as it becomes aware of
situations in the patent term adjustment computer program where it is not
correctly calculating the applicable patent term adjustment."

Because
the Office may only refund fees paid by mistake or in excess of that required (pursuant
to 35 U.S.C. § 42(d)), the Office advises applicants that "the procedure
set forth in this notice is not a
basis for requesting a refund of the fee specified in 37 CFR 1.18(e) for any
request for reconsideration under 37 CFR 1.705, including any previously filed request
that was solely based on the USPTO's pre-Wyeth interpretation of 35
U.S.C. 154(b)(2)(A)."

Finally,
the Office advises in the notice that it will be revising the PTA calculation
screen that is viewable through PAIR so that it complies with Wyeth.  The revised screen, which the Office expects to be ready by
July, will show:

(1)
the number of days of A-delay;
(2)
the number of days of B-delay;
(3)
the number of days of C-delay;
(4)
the number of days of A-delay that overlap with a day of B-delay plus the
number of days of A-delay that overlap with a day of C-delay;
(5)
the number of days of non-overlapping USPTO delay;
(6)
the number of days of applicant delay; and
(7)
the total PTA.

For
additional information regarding this and other related topics, please see:

• "USPTO and DOJ Will Not
Seek Review of Wyeth v. Kappos," January 21, 2010

• "USPTO Posts Notice Regarding Wyeth Decision," January 11, 2010
• "The Federal Circuit's Wyeth v. Kappos Decision," January 10, 2010
• "Wyeth v.Kappos (Fed. Cir. 2010)," January 7, 2010
•
"Patent Term Adjustment: 37 C.F.R. § 1.704(b)'s Three-Month Provision,"
November 17, 2009
•
"USPTO Says Some Requests for PTA Reconsideration Are Premature,"
September 7, 2009
•
"Fish & Richardson Catches Error in Patent Office's PTA Calculation,"
July 30, 2009
•
"More § 154(b)(4)(A) Actions Filed against Director," February 8,
2009
•
"Three More Patentees File § 154(b)(4)(A) Actions against Director Dudas,"
January 12, 2009
•
"More Patentees Follow Wyeth's Lead in Seeking Additional PTA,"
December 3, 2008
•
"USPTO to Appeal Wyeth v. Dudas," December 2, 2008
•
"Two Patentees Follow Wyeth's Lead in Seeking Additional PTA,"
November 12, 2008
•
"Wyeth v. Dudas (D.D.C. 2008)," October 16, 2008