[Federal Register Volume 75, Number 20 (Monday, February 1, 2010)]
[Notices]
[Pages 5043-5045]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-2041]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0006]


Interim Procedure for Patentees To Request a Recalculation of the 
Patent Term Adjustment To Comply With the Federal Circuit Decision in 
Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C. 
154(b)(2)(A)

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
modifying the computer program it uses to calculate patent term 
adjustments in light of Wyeth v. Kappos, No. 2009-1120 (Fed. Cir., Jan. 
7, 2010). The USPTO expects to complete this software modification by 
March 2, 2010. In the meantime, the USPTO is providing patentees with 
the ability to request a recalculation of their patent term adjustment 
without a fee as an alternative to the petition and fee required by 37 
CFR 1.705(d). In order to qualify, a form requesting a recalculation of 
the patent term adjustment must be submitted no later than 180 days 
after the patent has issued and the patent must be issued prior to 
March 2, 2010. In addition, this procedure is only available for 
alleged errors that are specifically identified in Wyeth. The USPTO is 
deciding pending petitions under 37 CFR 1.705 in accordance with the 
Wyeth decision. This notice also provides information concerning the 
Patent Application Information Retrieval (PAIR) screen that displays 
the patent term adjustment calculation.

DATES: Effective Date: The procedure set forth in this notice is 
effective on February 1, 2010.
    Applicability Date: The procedure set forth in this notice is 
applicable only to patents issued prior to March 2, 2010, in which a 
request for recalculation of patent term adjustment in view of Wyeth is 
filed within 180 days of the day the patent was granted.

FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal 
Administration by telephone at (571) 272-7702, or by mail addressed to: 
Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: Under 35 U.S.C. 154(b)(1), an applicant is 
entitled (subject to certain conditions and limitations) to patent term 
adjustment for the following reason: (1) If the USPTO fails to take 
certain actions during the examination and issue process within 
specified time frames (35 U.S.C. 154(b)(1)(A)), which are known as the 
``A'' delays; (2) if the USPTO fails to issue a patent within three 
years of the actual filing date of the application (35 U.S.C. 
154(b)(1)(B)), which are known as the ``B'' delays; and (3) for delays 
due to interference, secrecy order, or successful appellate review (35 
U.S.C. 154(b)(1)(C)), which are known as the ``C'' delays. 35 U.S.C. 
154(b)(2)(A) provides that ``[t]o the extent that periods of delay 
attributable to grounds specified in [35 U.S.C. 154(b)(1)] 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 
USPTO interpreted this provision as covering situations in which a 
delay by the USPTO contributes to multiple bases for adjustment (the 
``pre-Wyeth'' interpretation of 35 U.S.C. 154(b)(2)(A)). See 
Explanation of 37 CFR 1.703(f) and of the United States Patent and 
Trademark Office Interpretation of 35 U.S.C. 154(b)(2)(A), 69 FR 34283 
(June 21, 2004). The United States Court of Appeals for the Federal 
Circuit, however, recently held in Wyeth that the USPTO's 
interpretation of 35 U.S.C. 154(b)(2)(A) was too strict, and that 
periods of delay overlap under 35 U.S.C. 154(b)(2)(A) only if the 
periods which measure the amount of adjustment under 35 U.S.C. 
154(b)(1) occur on the same calendar day.
    The USPTO makes patent term adjustment determinations by a computer 
program that uses the information recorded in the USPTO's Patent 
Application Locating and Monitoring (PALM) system, except when an 
applicant requests reconsideration pursuant to 37 CFR 1.705. See 
Changes to Implement Patent Term Adjustment Under Twenty-Year Patent 
Term, 65 FR 56365, 56370, 56380-81 (Sept. 18, 2000) (final rule). The 
USPTO is in the process of revising the computer program it uses to 
calculate patent term adjustment to calculate overlapping delays 
consistent with the Federal Circuit's interpretation of 35 U.S.C. 
154(b)(2)(A) in Wyeth. The USPTO expects the revisions to the patent 
term adjustment computer program to be in place for use on the patents 
issuing on March 2, 2010.
    Patentees should note that the patent term adjustment provisions of 
35 U.S.C. 154(b) are complex, there are numerous types of 
communications that are exchanged between applicants and the USPTO 
during the patent application process, the PALM system was not 
originally designed for the purpose of calculating patent term 
adjustment as provided in 35 U.S.C. 154(b), and one or more of the time 
frames specified in of 35 U.S.C. 154(b)(1)(A) and (B) are not met 
presently in a high percentage of the patents. In addition, revisions 
to the patent term adjustment computer program necessary to calculate 
overlapping delays consistent with the Federal Circuit's interpretation 
of 35 U.S.C. 154(b)(2)(A) in Wyeth significantly increases the 
complexity of the patent term adjustment computer program. Thus, for 
patents issuing on or after March 2, 2010, a patentee who believes that 
the patent term adjustment calculation for his or her patent is not 
correct must file a request for reconsideration under 37 CFR 1.705(d) 
that complies with the requirements of 37 CFR 1.705(b)(1) and (b)(2) 
within two months of the date the patent issued. The USPTO is modifying 
and will continue to modify the patent term adjustment computer program 
as it becomes aware of situations in the patent term adjustment 
computer program where it is not correctly calculating the applicable 
patent term adjustment.
    Requests for Reconsideration of the Patent Term Adjustment 
indicated in the Patent: 37 CFR 1.705(d) provides, in part, that any 
request for reconsideration of the patent term adjustment indicated in 
the patent must be filed within two months of the date the patent 
issued and must comply with the requirements of 37 CFR 1.705(b)(1) and 
(b)(2). 35 U.S.C. 154(b)(4) provides that an applicant dissatisfied 
with a determination made by the Director under 35 U.S.C. 154(b)(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.
    The USPTO is providing an optional procedure under which patentees 
seeking a revised patent term adjustment in a patent issued prior to 
March 2, 2010, may request that the

[[Page 5044]]

USPTO recalculate the patent term adjustment without a request for 
reconsideration under 37 CFR 1.705(d) (or fee), provided that the 
patentee's sole basis for requesting reconsideration of the patent term 
adjustment in the patent is the USPTO's pre-Wyeth interpretation of 35 
U.S.C. 154(b)(2)(A) and such a request is filed within 180 days of the 
day the patent was granted. The USPTO is providing a Request for 
Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/
131) for use in making such a request. The Request for Recalculation of 
Patent Term Adjustment in View of Wyeth form (PTO/SB/131) is available 
on the USPTO Web site at http://www.uspto.gov/forms/index.jsp. This 
procedure and Request for Recalculation of Patent Term Adjustment in 
View of Wyeth form (PTO/SB/131) are applicable only for patents that 
issue prior to March 2, 2010. The USPTO will deny as untimely any 
request for recalculation of patent term adjustment indicated on a 
patent that is not filed within 180 days of the day the patent was 
granted. Patentees are reminded that this is an optional procedure, and 
that any patentee who wishes to preserve his or her right to review in 
the United States District Court for the District of Columbia of the 
USPTO's patent term adjustment determination must ensure that he or she 
also takes the steps required under 35 U.S.C. 154(b)(3) and (b)(4) and 
37 CFR 1.705 in a timely manner.
    The fee specified in 37 CFR 1.18(e) is required for a request for 
reconsideration under 37 CFR 1.705 (37 CFR 1.705(b)(1)), and the USPTO 
may only refund fees paid by mistake or in excess of that required (35 
U.S.C. 42(d)). Therefore, the procedure set forth in this notice is not 
a basis for requesting a refund of the fee specified in 37 CFR 1.18(e) 
for any request for reconsideration under 37 CFR 1.705, including any 
previously filed request that was solely based on the USPTO's pre-Wyeth 
interpretation of 35 U.S.C. 154(b)(2)(A).
    The procedure set forth in this notice and the Request for 
Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/
131) may not be used to request a reconsideration of the patent term 
adjustment indicated in the notice of allowance in an application that 
has not yet issued as a patent. If the application issues as a patent 
prior to March 2, 2010, the optional procedure set forth in this notice 
and the Request for Recalculation of Patent Term Adjustment in View of 
Wyeth form (PTO/SB/131) may be used to request recalculation of the 
patent term adjustment provided on the patent. It is expected that for 
applications issuing as patents on or after March 2, 2010, the patent 
term adjustment calculation will be consistent with the Federal 
Circuit's interpretation of 35 U.S.C. 154(b)(2)(A) in Wyeth.
    The USPTO is deciding any currently pending request for 
reconsideration of the patent term adjustment indicated in the patent 
under 37 CFR 1.705(d) that was filed within two months of the date the 
patent issued consistent with the Federal Circuit's interpretation of 
35 U.S.C. 154(b)(2)(A) in Wyeth. Patentees who received a decision on a 
request for reconsideration of the patent term adjustment indicated in 
the patent under 37 CFR 1.705(d) under the USPTO's pre-Wyeth 
interpretation of 35 U.S.C. 154(b)(2)(A) may file a request for 
reconsideration of that decision if such a request for reconsideration 
is filed within two months of the date of the decision on a request for 
reconsideration (37 CFR 1.181(f)). If the patentee's sole basis for 
requesting reconsideration of the decision is the USPTO's pre-Wyeth 
interpretation of 35 U.S.C. 154(b)(2)(A), the request for 
reconsideration need only state that reconsideration is being requested 
in view of the Federal Circuit's decision in Wyeth (the Request for 
Recalculation of Patent Term Adjustment in View of Wyeth form (PTO/SB/
131) may also be used for this purpose).
    Patentees seeking a revised patent term adjustment in a patent 
issued on or after March 2, 2010, must file a request for 
reconsideration under 37 CFR 1.705(d) that complies with the 
requirements of 37 CFR 1.705(b)(1) and (b)(2) within two months of the 
date the patent issued.
    To the extent that the procedures adopted under the authority of 35 
U.S.C. 2(b)(2) and 154(b)(3) require that any request for 
reconsideration of the patent term adjustment indicated in the patent 
must be filed within two months of the date the patent issued and 
include the information required by 37 CFR 1.705(b)(2) and the fee 
required by 37 CFR 1.18(e), these requirements are hereby sua sponte 
waived for patents that meet all of the following criteria: (1) The 
patent must be issued prior to March 2, 2010; (2) the patentee's sole 
basis for requesting reconsideration of the patent term adjustment in 
the patent is the USPTO's pre-Wyeth interpretation of 35 U.S.C. 
154(b)(2)(A); and (3) the Request for Recalculation of the Patent Term 
Adjustment in View of Wyeth form (PTO/SB/131) is filed within 180 days 
of the day the patent was granted. See 37 CFR 1.183. This waiver does 
not apply to patents issued on or after March 2, 2010, to requests that 
the USPTO recalculate the patent term adjustment for alleged errors 
other than that identified in Wyeth, or to any request for 
reconsideration of the patent term adjustment indicated in the patent 
filed later than 180 days after the patent was granted.
    Paperwork Reduction Act: This notice involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this notice is covered by OMB control number 0651-0020.
    Patent Term Adjustment Information Displayed in PAIR: The USPTO 
provides a patent term adjustment calculation screen that is viewable 
through PAIR. The patent term adjustment screen has been displaying the 
following information at the right hand column: (1) USPTO delay days 
(the number of days of ``A'' and ``C'' delay); (2) Three Year Delay 
days (the number of days of ``B'' delay); (3) Applicant Delay days (the 
number of days by which the USPTO delay days will be reduced); and (4) 
the Total Patent Term Adjustment. Patentees who use the PAIR patent 
term adjustment calculation screen should note that it does not display 
the periods of delay which overlap and thus is not adequate for 
calculating the patent term under the Federal Circuit's interpretation 
of 35 U.S.C. 154(b)(2)(A) in Wyeth. The USPTO plans to revise this 
screen to show: (1) the number of days of ``A'' delay; (2) the number 
of days of ``B'' delay; (3) the number of days of ``C'' delay; (4) the 
number of days of ``A'' delay that overlap with a day of ``B'' delay 
plus the number of days of ``A'' delay that overlap with a day of ``C'' 
delay (the provisions of 35 U.S.C. 154(b)(1)(B)(ii) prevent a ``B'' 
delay period and ``C'' delay period from overlapping); (5) the number 
of days of non-overlapping USPTO delay; (6) the number of days of 
applicant delay; and (7) the total patent term adjustment. The revised 
PAIR patent term adjustment screen, however, will not be ready by March 
2, 2010. The USPTO expects the revised PAIR patent term adjustment 
screen to be ready by July of 2010.
    Nothing in this notice shall be construed as a waiver of the 
requirement of 35 U.S.C. 154(b)(4) that any civil action by an 
applicant dissatisfied with a determination made by the Director under 
35 U.S.C. 154(b)(3) be filed in the United States District Court for 
the District of Columbia within 180 days after the grant of the patent.


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    Dated: January 26, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-2041 Filed 1-29-10; 8:45 am]
BILLING CODE 3510-16-P