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January 07, 2010


Patent term adjustment calculations are considered time taking and tedious process. Applicants are required to pay a good sum to their attorneys for re-confirming the patent term adjustment calculated by USPTO. Wondering how come the problem remained undetected so far. Should the applicants consider a check on the patent term adjustment a mandatory step to their patent prosecution process? Wondering as of today how many patents out there are affected by the "interpretation" of the relevant provisions.


Nice summary of Wyeth case. Harold Wegner has noted that the PTO may have violated patent term adjustment (PTA) in other ways, giving as an example the actual PCT filing date for the B period, not the national stage entry date as currently in the PTO PTA reg.

Not sure what your beef is A,
"Wondering how come the problem remained undetected so far." - The problem is typically detectable only after the government makes the actual PTA calculation and one only has a very small window afterwards to act on that information.

It is standard practice with me and mine to verify PTA. Always has been.

Noise above Law, do you charge for verifying PTA?


I also charge for answering FAOM's that call up ridiculous art that is generated by key word search of claim terms that have absolutely no other tie to the application than the word is used in a claim.

What of it?

US, being the only "first-to-invent" country, is the country of choice for a majority of patent applicants all around the world. However, appears that prosecution is taking longer than before, there is an increase in the number of prior arts and a corresponding increase in the number of office actions, RCEs, appeals, costs, and unfortunately, outbursts - both by attorneys and applicants.

May God help us - give us some break.


While prosecution does indeed seem to be taking longer, that effect is not isolated to the US. Check out the pendency statistics for most any patent office and you will see the same thing.

I am not sure what you are trying to say in the rest of your post, but you seem to slant the problems to be applicant/attorney driven. I would hazard a guess that you work at the Office by the way you want to blame the customer for your woes.

Will the PTO go back and recalculate the incorrect PTA's own their own? Or do we have to file a petition for each case, and if so, can we argue that the deadline gets reset by this case?

Dr. Valoir -
In Don's post of Jan. 21 in which he reported that the PTO and Dept of Justice will not appeal the Federal Circuit's decision, he also noted that the PTO will be publishing guidance concerning PTA calculations and petitions in light of the Wyeth decision.

Until that guidance comes out, it is anybody's guess as to what the PTO will do as far as correcting previously made 'inaccurate' calculations. Maybe something, maybe nothing. In the meantime, it is probably most prudent to continue to handle PTA reconsideration requests under the current deadlines as established by the statute (35 USC 154(b)) and regulations (37 CFR 1.705 et seq).


I spoke with the office today, and they are not sure whether they will auomatically re-calculate PTAs, or provide some 2-6 month grace period in light of the change in interpretation. We will have to watch for their guidance to issue, and until then follow the current deadlines, as you suggest.

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