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November 08, 2012


We greatly appreciate your review of the Exelixis decision. One notable omission however, the article fails to even mention the successful law firm that brought this PTA calculation error to District Court and successfully argued over the PTO position. We note that citing credit to the victorious law firm is not new, see for example, Patent Docs article: "Fish & Richardson Catches Error in Patent Office's PTA Calculation" published here on July 30, 2009. For the benefit of your readers, the successful law firm was Honigman Miller Schwartz and Cohn LLP based in Detroit Michigan.

Correct. But obtaining justice is its own reward, after all.

Although the decision is only about the effect of RCEs, the effect of the decision immediately leads to appeals (even unsuccessful ones) that are filed after the 3-year date also causing no loss of PTA.

Richard, I agree. But, if you file the appeal after the 3 year mark, you would be accruing B delay and C delay simultaneously - and (under a natural reading of the Wyeth decision) the overlap would be discounted. However, if you are ultimately unsuccessful in your appeal, you would not accrue any C delay. In that case, you should not have any overlap - and you would get back all the B delay.

How about this - file an appeal after the 3 year mark, have jurisdication pass to the board after the Examiner's Answer, have the case languish for a year or two as it waits it's turn , file an RCE, and prosecute to allowance. Or, file the RCE after the Board's opinion. Or, file the RCE after a request for rehearing! And in all cases, Type B PTA would simply accumulate and accumulate and accumulate ...

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