The District Court for the District of Columbia recently granted summary judgment in favor of Wyeth, determining that the U.S. Patent and Trademark Office (USPTO) had misconstrued 35 U.S.C. § 154(b)(2)(A) and, as a result, had denied Wyeth a portion of patent term to which it was entitled. Wyeth v. Dudas, Case No. 07-1492 (D.D.C., Sept. 30, 2008) (Robertson, J.).
35 U.S.C. § 154 establishes that a patent term is 20 years from the earliest relevant filing date of a patent application. Because patentees do not benefit from patent term during prosecution, § 154(b)(1) further provides a patent term adjustment (PTA) to account for USPTO delays under certain circumstances. For example, the statute provides a one-day extension of term for every day corresponding to an "A delay," that is, where the USPTO fails to meet particular deadlines such as issuing a first Office Action within 14 months, responding to a reply within four months, and so forth. In addition, the statute addresses a "B delay" by giving a one-day extension of term for every day of prosecution that occurs three years after the filing date.
To the extent that "A delays" and a "B delay" overlap, § 154(b)(2)(A) mandates that the patent term adjustment "shall not exceed the actual number of days the issuance of the patent was delayed." § 154(b)(2)(A). The USPTO has interpreted this language to mean that a patentee may obtain credit for A delays or B delays, whichever is larger, but may not obtain credits for A delays plus B delays. According to the USPTO, any period of B delay necessarily overlaps with any periods of A delay.
In Wyeth, the D.C. District Court overruled the USPTO's interpretation. The Court noted that the problem with USPTO's construction is that it considers an application delayed under § 154(b)(1)(B) during the period the application has not yet been delayed, stating "the construction cannot be squared with the language of § 154(b)(1)(B), which applies 'if the issue of an original patent is delayed due to the failure of the [USPTO]'". Therefore, the Court held that under § 154(b)(1)(B) the period of delay begins after the expiration of the three years within which the USPTO has failed to issue a patent. The Court noted that periods of time only "overlap" if they actually occur on the same day. Thus, if an A delay occurs on one day and a B delay occurs on another, a patentee may obtain an extension for sum of A and B.
Practice Note: 37 C.F.R. § 1.705 indicates that any request for reconsideration of a final PTA determination by the USPTO must be filed within two months after the grant of a patent. Patentees with issue dates falling into this time window should consider filing such requests without delay. Section 154 itself indicates that an applicant dissatisfied with a USPTO determination regarding PTA may file a civil action in the D.C. District Court within 180 days after a patent issues. § 154(b)(4). It remains to be seen if the USPTO will put into place an efficient procedure to recapture erroneously denied PTA.
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