As we saw in the Wyeth v. Dudas [1] case, the US District Court for the District of Columbia overturned the USPTO’s interpretation of 35 USC § 154 (the statute that prescribes patent terms).
Section 154 grants extensions of patent terms for certain kinds of PTO delay. However, Congress says you can’t double-dip, i.e., to the extent that periods of delay overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.
The DC Court disagreed with the USPTO “explanation” of the rules that applicant gets credit for “A delay” or for “B delay,” whichever is larger, but never A + B.
It seems that many patents that had been pending for more than three years before issuance should now be entitled to additional time under the PTA. But, Rule 1.705(d) limits the time an applicant may challenge the final USPTO-calculated PTA of a patent.
It would seem that the statute provides that an applicant must apply for reconsideration of the PTA no later than the payment of the issue fee, and may do so only once.
35 USC §154(b)(A): [2] 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.
For these patents, you should petition immediately to have the patent term adjustment re-calulated.
So, what does this mean for patents issued more than two months ago?
There would appear to be three different categories of issued patents in relation to patent term adjustments:
1. Patents issued less than 2 months ago.
The final PTA determination, which is printed on the face of the patent, must be challenged within two months of the issue date.
2. Patents issued more than 2 months ago but less than 180 days ago.
If an applicant wants to appeal a patent term adjustment determination, then under the stature:
(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.
3. Patents issued more than 180 days ago.
The 180-day time period to bring the action under the statute is absolute and cannot be petitioned. Therefore, applicants would appear to need to appeal to the DC District Court under the Administrative Procedure Act within 180 days of issuance in order to have previous determinations set aside.
Generally, the district court has no jurisdiction to take an appeal unless the applicant perfected its administrative remedies before the USPTO, i.e., the applicant must have unsuccessfully petitioned for PTA correction from the USPTO under Rule 1.705(b), (c), and/or (d), but these wouldn’t seem to apply in this case.
So, what do you think? It would seem for patents in the last category, it may be worth petitioning first on the grounds of USPTO error in its misapplication of the rules and, barring that, filing suit in the DC District Court. If they won’t/can’t take up the matter due to the statute, then it would seem that only the legislature could intervene. Will this require an act of Congress?