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Wednesday, January 2, 2013


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.
Or call 1-888-468-0444