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« Court Report | Main | EU Commission Unveils Latest Patent Reform Proposal »

July 12, 2010

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So then, let's be clear. These guys are saying that since they couldn't be bothered to bring a suit like Wyeth against the PTO in the first place they now deserve to get their patent terms recalculated even though the law specifically gives them a time period (now expired) to do that?

Mhmm. Somehow I don't see this going very far. The director should have saved himself some trouble and further appealed the Wyeth case itself and had it properly disposed of rather than giving up.

6, do you actually have a law degree?

"6, do you actually have a law degree?"

I do not "actually" have a law degree and I also don't have one. I'm not 100% sure if I should bother to get one either. They cost as much as a nice house.

I tend to agree with 6 that this will be a tough argument to win.

I think this core issue may have been brought up at a PPAC meeting shortly after the interim procedure was announced (ie., why not open up the interim procedure to any issued, post May 29, 2000 filed application). I think they tried to stick to some deadline that related to the statutory 180 day bar date for filing suit.

The real issue for me is for the folks that had filed a petition and had it denied or dismissed by the PTO prior to either the Wyeth Dist.Ct. for D.C. or the Fed.Cir. decisions. I wonder if there's an argument to be made that filing a district court case would have been too costly...

While PTA petitions were typically held in abeyance pending the F.C. Appeal, the REAL tough decision was whether to file suit (and absorb associated costs) by the 180th day or to elect to hold out for favorable decision on the petition (having invested your $200 fee, plus atty fees). A risk/reward calculation, but one that should have been discussed between client/atty.

I think the argument is simple: does a patentee have a duty to challenge the PTO's interpretation of a statute that a court (the CAFC) finds to be contrary to the plain meaning of the statutory language? Typically, when a court makes a final determination of what a statute means, the application of the statute using the court's post hoc interpretation is retroactive - see the posts on Sherry Knowles arguments regarding this aspect of judicial interpretation.

Here, the CAFC found in Wyeth that the PTO's interpretation and implementation of the statute was incorrect, i.e., contrary to how the law was written (and it wasn't even close: the district court opinion at least conceded that the PTO's interpretation was reasonable; the CAFC thought it was clearly contrary to the plain meaning of the statute). So under these circumstances, why should Novartis, or any patentee who had their PTA improperly calculated, now be foreclosed from redress because the PTO once again promulgated a rule that says so? It is clear that this was, once again, a PTO interpretation of the statute. Why should we give the Office any more deference in how they interpret this part of the statute than the court did with regard to their interpretation of the A-delay/B-delay part of the same statute?

I thought so.

"So under these circumstances, why should Novartis, or any patentee who had their PTA improperly calculated, now be foreclosed from redress because the PTO once again promulgated a rule that says so? "

I think I covered this in my first post. Because the law says so. Or at least that's what your first post seems to blatantly say.

Despite what the law says, they're attempting to rely on equity, but I'm pretty sure that bringing suit 3 years after the deed was done is not in accordance with the principles of equity.

According to the maxims of equity

http://en.wikipedia.org/wiki/Maxims_of_equity

Equity aids the vigilant, not those who slumber on their rights.

And while it can be argued that these folks simply did not know that they were wronged until Wyeth concluded that is a bit of a falsity. Either they believe in the office's old interpretation or the new one. If they believe in the old one then they have no case or controversy. If they believe in the new one (which was well known even before Wyeth) then they should have known they were wronged the day their PTA issued the first time.

The only thing they can argue is that they now have changed their minds about how the statute is to be interpreted many years after the fact. Equity simply cannot avail there.

And that goes double since the law has in this case intended to enact an injustice (at least to those aggrieved it is an injustice, to the rest of us it is simply a statute o limitations type o deal).

BTW Kev, this:

"I think the argument is simple: does a patentee have a duty to challenge the PTO's interpretation of a statute that a court (the CAFC) finds to be contrary to the plain meaning of the statutory language? "

Is a question, not an argument. And in any event, the answer is yes.

"Typically, when a court makes a final determination of what a statute means, the application of the statute using the court's post hoc interpretation is retroactive - see the posts on Sherry Knowles arguments regarding this aspect of judicial interpretation."

That doesn't seem to matter since the application of that ruling requires a recalculation, and there is another law that governs that. The retroactive application of the court's interpration of the law doesn't affect that other law.

"Why should we give the Office any more deference in how they interpret this part of the statute than the court did with regard to their interpretation of the A-delay/B-delay part of the same statute?"

Because the interpretation of this part of the statute is completely straightforward?

http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_154.htm

"(3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.-

(A) The Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under this subsection.

(B) Under the procedures established under subparagraph (A), the Director shall-

(i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination with the written notice of allowance of the application under section 151; and

(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.

(C) The Director shall reinstate all or part of the cumulative period of time of an adjustment under paragraph (2)(C) if the applicant, prior to the issuance of the patent, makes a showing that, in spite of all due care, the applicant was unable to respond within the 3-month period, but in no case shall more than three additional months for each such response beyond the original 3-month period be reinstated.

(D) The Director shall proceed to grant the patent after completion of the Director's determination of a patent term adjustment under the procedures established under this subsection, notwithstanding any appeal taken by the applicant of such determination.

(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.-

(A) 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. "

Gl you guys, you're going to need it.

Well, 6, that is the argument. Which is why we have judges to decide these things. Of course, at its roots your argument is "anyone dumb enough to rely on a PTO determination deserves what she gets," which seems a little harsh.

I have a question, however: why do you, or the PTO, care? I understand under Dudas the attitude was "what we say, goes," but if you don't have that bias what is the beef? It is even possible that PTA could help the Office, since in at least some cases the extra time will extend patent term past the 11.5-year date, and so another (and most expensive) maintenance fee will come due. The common wisdom is that the budgetary shortfall the Office experienced several months ago was due to the dramatic reduction in allowances under the Dudas regime. This deprived the Office of money from issue fees and maintenance fees. If the Office benefits from these fees, then the extension of a patent that has been determined to have allowable claims should not matter to the Office. But it seems to matter to you.

My guess (at least under Dudas) was that PTA was considered to be a measure of bureaucratic ineptitude, where the more PTA the less able the Office was at performing its duties effectively. I understand that, but it seems to be an extreme response to the consequences of other factors - outdated infrastructure, too few examiners, "second look" review, etc.

Thanks for the comment.

"Of course, at its roots your argument is "anyone dumb enough to rely on a PTO determination deserves what she gets," which seems a little harsh."

To be precise I would say: anyone not satisfied with a PTO determination and is dumb enough not to say something within a reasonable period of time deserves what they get". More precisely I personally would say that nobody "deserves" PTA in the first instance. The backlog is what it is and PTO delay is what it is. The PTA adjustment is nothing but a relic of the congress shirking its responsibilities.

"why do you, or the PTO, care?"

As explained in the previous Wyeth thread, we really don't, except maybe for some higher up person who nobody save perhaps the director cares about. Oh and save for the time and effort it will take to recalculate years and years (millions?) of patent terms. That sht ain't free ya know.

I suppose an ancilliary concern might be that the public has a right to consider the PTA date set in stone after 180 days as per the statute and might have to keep readjusting their licensing agreements, renegotiating, etc. The PTO, as a member of a responsible government should care about that a little I suppose.

You could also say that my personal interest is an purely intellectual one. I like considering cases involving equitable considerations. Equity is, on the whole, imo, is much closer to justice than our laws are.

"My guess (at least under Dudas) was that PTA was considered to be a measure of bureaucratic ineptitude"

I don't know if I'd say necessarily ineptitude, though that is somewhat involved. More like inefficiency as that is the lion's share of PTA generators.

"I understand that, but it seems to be an extreme response to the consequences of other factors - outdated infrastructure, too few examiners, "second look" review, etc."

You're right there, it is a relic of congress not providing a fully funded (even over-funded) PTO as well as putting someone in place that would recognizing what the office actually needs. Specifically, internal processes that put an emphasis on substance rather than formalities etc, as well as actual management.

"Because the interpretation of this part of the statute is completely straightforward?"

Are you sure, 6?

1) § 154(b)(4) refers to (3), which deals with pre-grant activity (e.g., notice of allowance PTA, Director proceeding to grant despite an "appeal" having been taken [hmm....note that past tense is used here, does "appeal" refer to the "remedy" under § 154(b)(4)(A) or the "opportunity" under § 154(b)(3)(B)(ii)], but no post-grant activity.

2) 154(b)(4)(A) refers to an "applicant". All of § 154 uses "applicant" to refer to a patent applicant. If 154(b)(4)(A) meant to limit a patentee to 180 days - why doesn't it refer to a patentee?

§ 154(b)(4)(A)seems fishy to me.

6, all kidding aside, that is the best post I've ever read from you.

Thanks.

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