The patentability of inventions
is defined under Title 35 of the U.S. Code.
During the 1990’s Congress enacted the Uruguay Round Agreement Act and the American Inventors Protection Act (AIPA).
In 1994, the Uruguay Round
Agreement Act resulted in a patent term adjustment from 17 years to 20 years
from the date a patent application is filed.
It also established Patent Term Adjustment (PTA). The PTA was significantly amended with the
enactment of the AIPA in 1999 and provided for a Request for Continued
Examination (RCE). These significant law
changes led to litigation pertaining to the plain language of Title 35.
The U.S. District Court for the
Eastern District of Virginia has found in a recent case that the United States
Patent and Trademark Office’s (USPTO) interpretation and application of the
“RCE carve-out” provision of the PTA statue is contrary to law. See Exelixis, Inc. v. Kappos,
No. 1:12cv96 (E. D. Va. Nov. 1, 2012).
There is good chance that the
USPTO will appeal the Exelisis decision,
however, this holding prompts consideration for patentees owning patents issued
within the past 180 days or applicants considering whether to file an RCE.
An unresolved question concerning
the AIPA’s PTA provision is as follows:
Whether 35 § 154(b)(1)(B) requires
that an applicant’s PTA be reduced by the time attributable to an RCE, where,
as here (Exelixis), the RCE is filed
after the expiration of AIPA’s guaranteed three year period.
The plain language of Section 154
fails to address and does not require that an applicant’s PTA be reduced by the
time required to process an RCE that is filed after the expiration of the three
year period.
Per Exelixis, it is recommended that patent owners and applicants
consider these tips:
(1)
For any patents issued within the past 180 days, patent owners should evaluate
those patents to determine if the underlying application involved an RCE filed
after the three-year time period in order to determine whether they should seek
a PTA; and
(2)
Patent applicants should, if possible, wait to file an RCE until three years
after the application filing date. An RCE filed before the three-year time
period will preclude the applicant from obtaining additional PTA.
For
further answers to patent law questions and your PTA , please contact The Patent Law Office of Robert J.Sayfie.
Visit www.sayfiepatents.com
Or call 1-888-468-0444
