News & Events

SEPTEMBER 9, 2011

Yesterday, September 8, 2011, Congress passed patent reform legislation when the Senate voted 89-9 to approve a bill passed by the House of Representatives on June 23, 2011.  The bill, which President Obama is expected to sign, makes a variety of significant amendments to the current patent statute.

            Key provisions of the reform bill include:

•           Fees.  The new statute imposes a 15% increase in most patent fees, effective 10 days after enactment.  Please contact your COJK attorney if you would like to discuss early payment of outstanding USPTO fees (e.g., issue fees, maintenance fees) prior to this fee increase.

•           Adoption of a first-inventor-to-file system, replacing the current first-to-invent system.  The adoption will align U.S. law with that of other countries.  Under “first-to-file,” the first inventor to file a patent application will be awarded the patent, other conditions being met, rather than the first inventor to conceive the invention.  An inventor will still have a one-year grace period for filing a patent application following the inventor’s own disclosure of the invention.  “First-to-file” takes effect beginning with applications filed 18 months after the law is enacted.   The new system will likely encourage the early filing of patent applications.  Applicants may also consider filing more than one provisional application to capture those developments made after filing of a previous provisional application in order to secure priority dates.

•           Expanded Definition of Prior Art.  Section 102 prior art now includes offers, sales and public uses anywhere in the world, rather than just the U.S.  Prior art also includes patents and published applications “effectively filed” anywhere in the world before the filing date of the claimed invention. 

•           Expanded Prior User Rights.  Current law restricts the “prior user defense” to business methods adopted prior to the date of a patent application.  The restriction has now been removed, effective for patents issued on or after the date of enactment.  To invoke the defense a commercial use, either internally or an actual arm’s length sale or transfer, must have occurred at least one year prior to the effective filing date of the claimed invention or the date it was disclosed to the public.  This defense is not applicable if the patent was developed under a federal government funding agreement or by a nonprofit institution of higher education that did not receive private funding in support of that development.

•           Post-Grant Review.  A new “post-grant review” procedure is established.  Effective one year from enactment, any person other than the patent owner may, within 9 months of patent issuance, request post-grant review by a new Patent Trial and Appeal Board, which replaces the present Board of Patent Appeals and Interferences.  The patent may be challenged on any ground of patentability.  This is unlike other forms of post-issuance review under the new statute, such as inter parties review, in which the grounds for challenging a patent are limited to prior art patents and publications.  The review must be completed within one year (extendable to 18 months for good cause).

•           Inter Partes Review.   Following the later of the conclusion of a post-grant review or 9 months after patent issuance, a patent can be challenged in an inter partes proceeding before the Patent Trial and Appeal Board on the basis of prior art patents or printed publications.  Becoming effective one year after enactment, this “inter partes review” is similar to the present inter partes reexamination, but the review will be conducted by the Patent Trial and Appeal Board rather than patent examiners in the USPTO Central Reexam Unit.  There are other differences, including a modestly heightened standard for obtaining the review.  The review must be completed within one year (18 months if good cause), which is much shorter than the 3-4 years it commonly takes under the current system for inter partes reexaminations. 

•           Supplemental Examination.  A new, supplemental examination procedure will allow a patent owner to request the USPTO to consider, reconsider, or correct information relevant to the patent, thereby permitting patent owners to cure allegations of possible inequitable conduct arising from the original prosecution.  If a substantial new question of patentability is raised by the request, the Director will order reexamination of the patent.  This provision takes effect one year after enactment and applies to any patent issued before, on, or after that effective date.

•           Interferences.  Interference proceedings are eliminated, replaced by derivation proceedings in instances where a later applicant claims that a first applicant derived the invention from the later applicant’s work.  Interferences already in progress will continue.  This provision will take effect 18 months after enactment.

•           Ex parte Reexamination.   Ex parte reexaminations will continue to be available if requested by a patent owner or a third party, without change.  Ex parte reexaminations will apparently continue to be handled by examiners at the USPTO, rather than by the Patent Trial and Appeal Board, which will handle post-grant reviews, inter partes reviews and derivation proceedings.

•           Best Mode.  Failure to disclose the best mode of making and using a claimed invention will no longer be a basis for finding patent invalidity in proceedings commenced on or after the date of enactment.  However, inclusion of the best mode is still required under § 112, although it will likely be difficult for an examiner to determine if an application discloses the best mode. 

•           Prioritized Examination.  The act sets a fee of $4,800 for prioritized examination.  This will enable the USPTO to commence the “fast track” examination process announced in April of this year, but then postponed in light of budget restrictions.  This fee is in addition to the usual filing fees for search, examination, publication, etc.  Small entities will enjoy a 50% reduction in the prioritized examination fee.  This provision becomes effective 10 days after enactment.

•           Micro-Entity Status.  Effective 60 days after enactment, a “micro entity status” will be established.  Qualifying entities, including institutions of higher education, will enjoy a 75% discount on USPTO fees compared to the 50% discount provided for small entities.

•           Submission of Prior Art.  Upon payment of a small fee, third parties will be allowed to anonymously submit prior art and comment on the relevance of the documents to the examination of a pending application.  To have the art considered it must be submitted no later than 6 months after publication or before the date of first rejection, so long as a notice of allowance has not issued.   

 •          Opinions of Counsel.  Effective one year after enactment, the failure of an accused infringer to obtain an opinion of counsel or to produce such opinion during litigation cannot be used to prove willful infringement or inducement of infringement.

 •          False Marking.  Effective immediately, only the U.S. government may collect a penalty for “false marking” of a patent number on a product.  A competitor may sue for false marking, but upon a showing of liability may only collect compensatory damages sustained through “competitive injury.”  This provision should put a halt to the hundreds of false marking suits that have been clogging the courts.           

•           New Method of Marking Allowed.  Effective immediately, patent owners may now mark their products “virtually” by noting their web address on the product along with the word “patent” or “pat.” and by posting information about patent(s) covering the product on the website.  This provision will allow owners to update their patent markings more easily, without having to change their product labels.

The reform bill includes numerous other provisions of lesser importance.  Additionally, more detailed information about the bill will be posted on our website at http://www.cojk.com within the next several days.

This year will see the launch of a new .XXX top-level domain (TLD) directed to the online adult entertainment industry.  The launch has been touted as one of the most significant events since .COM was launched in 1985.  Tens of thousands of domain names already have been reserved by adult entertainment website owners.  However, not everyone is welcoming the addition of this TLD.  Trademark owners outside the adult entertainment industry have long opposed its launch due to concerns over their brands being registered as .XXX domain names.

Fortunately, the ICM Registry, the organization charged with the administration of the .XXX TLDs, instituted a process to address these concerns.  Starting September 2011, trademark owners who are not part of the adult entertainment industry will have a brief window of opportunity to “opt-out” of .XXX and prevent their trademarks from being registered as .XXX domain names (e.g. “mytrademark.xxx”).  Opt-out will be available to trademark owners during the “Sunrise Phase” for a one-time fee of $200-$300 per mark.

 
Key Points

• During the Sunrise Phase, trademark owners will be able to submit an opt-out application to a participating registrar to block the registration of their marks as .XXX domain names
• The ICM Registry is now accepting applications to reserve registered marks for Sunrise applications at no cost
• The Sunrise Phase begins in September 2011 and will last for approximately 30 days
• The one-time cost set by individual registrars for Sunrise applications will likely be around $200-$300 per trademark

Pre-Launch Rights Protection Mechanisms
The Sunrise Phase begins in September 2011 and continues for approximately 30 days.  Two groups are eligible to participate during this phase: Sunrise A and Sunrise B. The Sunrise A group consists of those within the adult entertainment industry who are able to establish prior rights in the desired .XXX domain name.

The Sunrise B group consists of those outside the adult entertainment industry.  Starting September 2011, this group will have approximately 30 days to “opt-out” of .XXX by submitting an application to block the registration of their trademark as a .XXX domain name.  While the specific mechanics of the application process have not yet been made available, we do know that to apply, a Sunrise B applicant must:  1) own a current trademark registration of national effect; 2) in a jurisdiction where the party conducts bonafide commercial activities under the mark; and 3) the trademark registration must have issued prior to the Sunrise Phase.  Owners with only common law trademark rights cannot participate in Sunrise.  In addition, the mark in the opt-out application must correspond exactly to the entire text of a registered text mark, or the textual component of a registered graphical mark. 

A successful Sunrise B opt-out application will be designated a “reserved-trademark” and will be removed from the pool of available names.  Those attempting to access the site for a reserved domain name will see a page indicating that the domain name is not available for registration.

Competing Applications
If there are competing claims to a mark by a Sunrise A and Sunrise B applicant, the Sunrise A applicant will be given an opportunity to withdraw the application.  If the Sunrise A applicant does not withdraw its application, the application will proceed and the Sunrise A applicant will waive its right to claim lack of notice in any subsequent adversarial proceeding.

Remaining Phases
The Landrush and General Availability Phases follow the Sunrise Phase.  During the Landrush Phase, those within the adult entertainment industry will be allowed to apply for .XXX domain names without any showing of prior rights.  After the close of Landrush, .XXX domain names will continue to be registered during the General Availability Phase on a first-come, first-serve basis.

Conclusions
Trademark owners are advised to take advantage of the brief window of opportunity provided during the Sunrise Phase and submit an opt-out application.  The $200-$300 cost of this pre-emptive application is far less than an enforcement proceeding, and is one effective way to protect a brand from unwanted associations with the adult entertainment industry.  Trademark owners also are advised to secure registrations for their marks.  While it is too late to secure a registration before Sunrise, a registration may nevertheless be necessary to take full advantage of ICM’s post-launch protection measures, such as a proposed rapid takedown service modeled after the Digital Millennium Copyright Act.  For additional information, please contact your COJK attorney.

By June 20, 2011, the future of Internet domain names may become much clearer.  After years of deliberation, the Internet Corporation for Assigned Names and Numbers (ICANN), the not-for-profit corporation that regulates and governs the Internet domain name space, has set a timeline for approval of procedures that would allow private individuals and companies to register and operate their own top-level domains.

Since the early days of the Internet, companies seeking to stake out their territory online have been restricted to a limited number of generic top-level domains (gTLDs), such as .com, .net, or .org, or country code top-level domains (ccTLDs), such as .de, .fr, or .au.  However, under the timeline issued recently by ICANN, the arrival of private, branded TLDs (such as .cojk or .yourbrandhere) appears close at hand.

While ICANN had discussed the possibility of TLD expansion for years, without any firm timeline, it concluded its most recent international public meeting in March by passing the “Process for Completion of the Applicant Guidebook for New gTLDs,” which sets forth the following timeline for finalizing and implementing the new gTLD rules:

April 15, 2011:  Publication of Revised Applicant Guidebook for New gTLDs

April 15, 2011 to May 15, 2011:  Public Comment Period

May 30, 2011:  Publication of Final Applicant Guidebook for New gTLDs

June 20, 2011:  ICANN Vote on Approval of Final Applicant Guidebook for New gTLDs

Assuming the new gTLD procedures are in fact approved in accordance with this timeline, the application window for new gTLDs is likely to open in October 2011 (after a proposed 4-month media and awareness campaign).  However, the cost of applying for a new gTLD may deter any potential “land rush.”  Although the current proposed regulations are still subject to change, the current draft sets forth a $185,000 application fee.  Despite the significant investment required, brand owners may wish to weigh the costs and benefits of operating such an individualized TLD – and of keeping such a branded TLD out of competing hands.

The text of the current proposed Applicant Guidebook for New gTLDs is available here:  gTLD Applicant Guidebook.  Look for further updates from COJK regarding new gTLD guidelines as they progress toward approval. 

If you would like to discuss in further detail how ICANN’s new gTLD proposal may affect your trademark enforcement or brand management strategy, COJK attorneys would be more than happy to discuss this matter.

On March 8, 2011, the Senate voted to pass a patent reform bill that now heads to the House of Representatives for consideration.  Patent reform has been a topic on the Congressional floor since 2005, and each proposed bill has gone through several iterations.  The current Senate bill, called the America Invents Act and passed by a 95-5 vote, provides a variety of amendments to title 35 of the U.S. Code.  If passed into law, some of the more significant provisions include:

• Adoption of a first-inventor-to-file system, replacing the current first-to-invent system.  This adoption is intended to align U.S. law with international laws and treaties regarding the determination of which inventor is entitled to a patent when multiple applicants claim the same subject matter.  A one-year grace period for filing still exists, however the grace period is limited to disclosures by the inventors or derived from the inventors, rather than the present grace period available as to all disclosures.  First-inventor-to-file would take effect beginning with applications filed 18 months after the law becomes effective.  The bill further provides for derivation proceedings to replace current interference proceedings in instances where a later applicant claims that a first applicant derived the invention from th e later applicant’s work.
• Implementation of new post-grant review procedures. 
• Within nine months of grant, any person other than the patent owner may petition for a post-grant review of a patent on any ground of patentability based on prior art or Section 112 compliance.
• After nine months post-grant or the conclusion of any post-grant review, patents could be challenged inter partes on the basis of patents or printed publications.
• A supplemental examination procedure is provided for a patent owner to request the USPTO consider, reconsider, or correct information believed relevant to the patent, thereby permitting patent owners to cure allegations of possible inequitable conduct arising from the original prosecution by making post-grant submissions to the USPTO.  If a substantial new question of patentability is raised by the request, the Director will order reexamination of the patent.  Ex parte reexaminations will continue to be available if requested by a patent owner or a third party, upon a showing of a substantial new question of patentability.
• A transitional post-grant procedure to review the validity of business method patents that pertain to the practice, administration, or management of a financial product or service is also provided.
• Elimination of failure to disclose the best mode of making and using the claimed invention as a basis for finding patent invalidity, although the USPTO would continue to require the best mode be disclosed in patent applications.
• Permission of the USPTO to be a fee setting authority, in contrast to the current system where the USPTO must receive approval from Congress to set fees.  This provision may result in higher fees.  The bill also halts fee diversion such that the USPTO may retain the fees it collects.
• Establishment of a “micro entity status” as a subset of the “small entity” status, where micro entities, such as applicants with fewer than five patent applications or state institutions of higher education, could enjoy a 75% discount on USPTO fees compared to the 50% discount provided for small entities.
• Permission for third-party submissions of prior art during prosecution of an application.
• Establishment that failure of an accused infringer to obtain an opinion of counsel or to produce such opinion during litigation cannot be used to prove willful infringement.
• Limitations on who may sue regarding false markings. 

Notably, provisions regarding damages in infringement lawsuits were omitted from the bill.  No prior user rights are provided as a defense to infringement.  The Senate bill instructs the USPTO Director to analyze and report on the operation and effects of prior user rights in other industrialized countries. The proposed effective dates are not the same for each provision, and some provisions are retroactive in nature while others are not.  A PDF version of the bill as provided by the AIPLA may be found here.

The bill is next considered by the House Judiciary Committee.  The Chairman of this Committee, Sen. Lamar Smith, indicated that the House will introduce similar legislation this month.  If the House bill passes and is different than the Senate bill, the differences will have to be reconciled before a final bill is brought before the President for signature. 

(This article was published as the cover story in the November 2010 issue of IP Today, please click here to download the pdf version of the article.)

Recent developments regarding the Patent Prosecution Highway (PPH) have made it easier to receive faster allowances of certain U.S. patent applications.  Not all applications are eligible, but for those that are, patent practitioners are reporting allowances as fast as 2-15 days after filing a petition with the U.S. Patent and Trademark Office (USPTO) to make the application special using the PPH.

The purpose of the PPH is to minimize duplicative searching and prosecution efforts through workload sharing among partnering patent offices regarding applications with common claims. This often results in the expedited allowance of PPH applications and a reduction in prosecution costs. The PPH allows an applicant who has received notification of allowable claims from a first patent office to request fast-track examination of a corresponding application in a second patent office based upon the search and prosecution results of the first patent office. The first patent office is called the Office of First Filing (OFF) and the second patent office is called the Office of Second Filing (OSF). As of this writing, the patent offices partnering with the U.S. are Australia, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Singapore, and the United Kingdom. According to the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent), Rospatent will join the PPH on September 1, 2010.

It is important to note that entrance of an application into the PPH is not a guarantee of allowance. Each PPH application is subject to analysis by an examiner under the patent law of the OSF, and an examiner is not obligated to rely only upon the search results and conclusions of the OFF. Furthermore, an applicant is still required to adhere to disclosure obligations as appropriate to the patent law of the OSF.

The PCT-PPH

Use of the PPH prior to the introduction of the PCT-PPH, described below, was not an attractive option for many applicants who wanted to file in several countries because one had to use the route of filing Paris Convention applications, rather than a PCT application, in order to use the PPH. The introduction of the PCT-PPH provides an easier route for applicants to pursue quick allowances in certain circumstances.

In a pilot program, the PPH has recently expanded such that an applicant receiving a favorable report on patentability regarding a PCT application having the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), or the Korean Intellectual Patent Office (KIPO) as the International Searching Authority (ISA) may request fast-tracking of a U.S., European, Japanese, and/or Korean patent application related to that PCT when that application has entered the national phase. This is referred to generally as the PCT-PPH. The recent inclusion of Korea is significant because choosing the KIPO as the ISA for PCT applications is fairly common due to its relative affordability compared to the USPTO, the EPO, and the JPO, and because of the searching competency of the KIPO.   Upon receiving favorable treatment of at least one claim in, e.g., a PCT Written Opinion (ISA/USPTO, EPO, JPO, or KIPO), one may request fast-track examination of a U.S., European, Japanese, and/or Korean application related to that PCT.

“Favorable treatment” refers to issuance of a “favorable international work product” with respect to at least one claim. That is:

1. a Written Opinion from an ISA (WO/ISA), where the ISA must be the USPTO, EPO, JPO, or KIPO;
2. a Written Opinion from an International Preliminary Examining Authority (WO/IPEA) (IPEA must be the USPTO, EPO, JPO, or KIPO); or
3. an International Preliminary Examination Report (IPER) from an IPEA (IPEA must be the USPTO, EPO, JPO, or KIPO);

must issue indicating at least one claim in the PCT application has novelty, inventive step, and industrial applicability.

When requesting fast-track examination of a U.S. application using the PCT-PPH, several requirements must be met. Details regarding these requirements are set forth at http://www.uspto.gov/patents/init_events/pph/index.jsp for each partnering country. One of the most important requirements is that substantive prosecution of the U.S. application has not begun. Also, all claims of the U.S. application must correspond, or must be amended to correspond, to the favorably treated claims. An applicant must also file a petition to make the U.S. application special, also called a “request” (this is not the same as the USPTO Accelerated Examination program). This “special” status imparts certain benefits: not only is the application advanced out of turn for examination, but applications will continue to be treated as special throughout the entire prosecution before the USPTO, including any appeals. A request need not be filed at the same time that the U.S. application is filed, and there is no USPTO fee associated with the request.

To fast-track European, Japanese, or Korean applications before the EPO, JPO, or KIPO using the PCT-PPH, one must consult the PCT-PPH rules of the EPO, JPO, and KIPO, as appropriate.

Who Should Use the PCT-PPH?

Clients having, or considering filing, a PCT application designating the USPTO, EPO, JPO, or the KIPO as the ISA who wish for expedited allowance of a related U.S. application that has not yet undergone substantive prosecution should consider utilizing the PCT-PPH. Even if a related U.S. application has begun substantive prosecution, one may file a U.S. continuation, divisional, or continuation-in-part application and request entry of that application into the PPH. Patent practitioners have reported Notices of Allowance issued from the USPTO within 2-15 days from the date of a PCT-PPH (ISA/Korea) request.

A link to a more detailed paper regarding the PPH and the PCT-PPH can be found here. If you have questions about the PCT-PPH or the PPH in general, please contact Tamara Kale or your COJK attorney.

Today the U.S. Supreme Court released its long-awaited decision in Bilski v. Kappos, a case that was expected to have wide-reaching impact in deciding the bounds of patentable subject matter, especially with regard to patents relating to business methods and software. The Court affirmed that business methods and software are eligible for patent protection unless they are written to cover “laws of nature, physical phenomena, and abstract ideas.” The Court held that the ‘machine-or-transformation’ test used by the Court of Appeals for the Federal Circuit is not the only test for determining patent eligibility. The decision appears to preserve the status quo and leaves the door open for patents directed to software and business methods.

The claims of the Bilski patent application are directed to a business method relating to hedging risk in the energy market. Previously, the Federal Circuit held that the claims of the Bilski application were not eligible for patent protection, stating that a claim to a process must either (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. The Federal Circuit held that this “machine-or-transformation test” was the sole test for determining patent eligibility of a process.

In an opinion written by Justice Kennedy, the Supreme Court agreed, as expected, that the claims of the Bilski application are not patent-eligible subject matter. In interpreting Section 101 of the U.S. patent laws, the Court held that “the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but that the test is “not the sole test for deciding whether an invention is a patent-eligible ‘process.’” The Court also held that “Section 101 similarly precludes the broad contention that the term ‘process’ categorically excludes business methods.”

While the Supreme Court left open the door to patent eligibility, it did little to clarify how to pass through that door. Today’s opinion referred to legal principles given by the Court in its previous decisions in Benson, Flook, and Diehr. Claims to software or business methods that do not pass the machine-or-transformation test may nevertheless be eligible for patent protection if an argument for patent eligibility can be made under those principles. Nevertheless, it remains unclear exactly where the line is drawn.

In sum, it appears that the Supreme Court passed on the opportunity to make any large change in the patentability of software or business methods. For software companies and other entities involved with patents in this area, this opinion appears to preserve the status quo.

If you have any questions or concerns about how the Bilski decision impacts you, please do not hesitate to contact your COJK attorney.

READ THE COMPLETE OPINION

On Thursday, September 24, 2009, the World Intellectual Property Organization (WIPO) announced that Thailand had completed the necessary documentation to become a contracting state of the Patent Cooperation Treaty (PCT). The effective date for Thailand’s entry is December 24, 2009 (country code: TH). As of this date, any PCT application that is filed will automatically designate Thailand for international preliminary examination, along with the other 141 contracting states of the PCT. Nationals and residents of Thailand will also be able to file PCT applications as of this date.

According to its Department of Intellectual Property website, Thailand has considered entry into the PCT since at least 2007. Thailand’s entry follows that of Chile (June 2, 2009) and Peru (June 6, 2009). Commercial interest in Thailand has increased in recent years due, in part, to its allure as a travel destination such that tourism is one of its top industries along with textiles, garments, manufacturing (e.g., computers and other electronics), automobiles, and automotive parts. Thailand, whose population ranks 21st in the world at approximately 65 million, is a prominent exporter of goods and is the number one exporter of rice worldwide.

An applicant of a contracting state (e.g., Thailand, the U.S., Canada, Mexico, China, Japan, Germany, Italy) who develops an invention with international marketability may wish to consider filing a PCT application. A PCT application is a cost-effective, streamlined method that allows an applicant to seek patent protection in one or more contracting states without having to initially file individually in each country.

For more information on this issue please contact:

Tamara Kale
206-682-8100
tamara.kale@cojk.com

Due to the rapid pace of evolving technology, many patents will have lost their commercial value near the end of their full term. However for patents that are actively generating royalties, blockbuster drugs or other core technology patents, each day of lost patent term is a potential day of lost profits.  While the procedures for maximizing patent term under the existing Patent Office rules are well understood, the Wyeth v. Dudas that is currently on appeal may allow patent owners the opportunity to gain significant additional patent term if steps are timely taken.

The number of days of patent term adjustment to be awarded are set forth in parts A and B of 35 U.S.C. § 154(b).  Under part A, a patent gets one day of patent term adjustment (PTA) for each day the Patent Office does not provide an Office Action or Notice of Allowance beginning 14 months from the day on which the application was filed.  Additional days of PTA are added for each day after four months where the PTO does not reply to a response submitted by the applicant, a decision from the Appeals Board or a decision from a Federal Court.  Additional days of PTA are also awarded for each day that the Patent Office does not issue a patent within four months of the issue fee being paid.

Under part B, one day of PTA is added for each day the Patent Office does not issue a patent beginning on the third anniversary of its filing.  Not included in the days of PTA awarded are any time consumed by requests for continued examination or any time where the applicant was deemed to have “failed to engage in reasonable efforts to conclude prosecution of the application.”[1] The PTO rules set forth a multitude of actions for which the applicant will lose days of PTA.

The time period for a patent owner to contest the number of days of PTA awarded are strict.  If an applicant does not agree with the days of PTA calculated by the Office, the applicant must submit an application for patent term adjustment no later than payment of the issue fee.[2] If the Patent Office does not revise the patent term, any requests for reconsideration of the patent term adjustment must be filed within two months of the issue date.[3] Any further remedies for the correction of the number of days of PTA awarded must be obtained in a civil action against the Director filed in the District Court for the District of Columbia within 180 days of patent grant.  35 U.S.C. § 154(b)(4).

The Wyeth v. Dudas Case

In September of 2008, the District Court for the District of Columbia decided a case brought by Wyeth and Elan Pharma International Ltd. against John Dudas in his capacity as Director for the U.S. Patent and Trademark Office.  At issue is the office’s interpretation of 35 U.S.C. § 154(b)(2)(A) that concerns how the days of overlap in the A and B periods are to be handled.  In a nutshell, the PTO was interpreting the statute to give applicants credit for the A delay or the B delay, whichever was larger, but never the sum of the A and B delays.  In contrast, it was Wyeth’s position that the proper period as defined in the patent statute is the sum of the A and B periods less any period of overlap.

PTO’s position is that PTA = longer of Part A or Part B.

Wyeth’s position is that PTA = Part A + Part B – Overlap.

The District Court agreed with Wyeth’s interpretation of how the days of PTA should be calculated..  On November 11, 2008, The Patent Office appealed the Wyeth v. Dudas case to the Court of Appeals for the District of Columbia.

What To Do Until the Wyeth Case is Decided

If the Patent Office wins the Wyeth case, then patent terms will be calculated as before.  If Wyeth wins the case, then the Patent office will have to grant patents issuing after the appeal the sum of the part A and B periods less any overlap.

There is no guarantee that the Patent Office will retroactively grant additional days of patent term for other patents that are eligible.  Because the time periods for contesting the number of days of PTA awarded are so strict, owner of patents that are issuing now from applications that were pending for more than 3 years may consider requesting that the PTO grant the number of days of PTA according to the formula approved in the Wyeth case before the issue fee is paid or within 2 months of issue.  If the PTO does not respond or denies the request, patent owners should consider filing suit against the office within 180 days of issue in order to ensure that any such request will not be time barred.

While not every patent would justify the expense to make sure that the maximum number of days of PTA are granted, patents owners may have one more “corporate jewels” for which such efforts are warranted.

[1] 35 U.S.C. § 154(b)(2)(C)(i).

[2] 37 C.F.R. § 1.705(a).

[3] 37 C.F.R. § 1.705(d).

6 7 Wyeth v. Dudas, 580 F. Supp. 2d 138, 88 USPQ’2d 1538 (D.D.C., September 30, 2008)