Wyeth v. Kappos: Recalculating Patent Term Adjustment

In Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010), the Federal Circuit corrected the manner in which the U.S. Patent and Trademark Office has been calculating Patent Term Adjustment (PTA), which allows a patent to be enforced for time in addition to the default statutory term (20 years from filing).

35 U.S.C. § 154(b), which is part of the American Inventors Protection Act (enacted in 1999), provides certain guarantees to patentees—including the "A guarantee" and the "B guarantee." (The "C guarantee" was not at issue in this case.) The A guarantee provides one day of PTA to the patentee for every day the PTO fails to meet specific deadlines. For example, the PTO must respond within 14 months of the filing date of a new patent application. The patentee will receive one extra day of enforceability for every day the PTO takes to respond after the 14 months.

The B guarantee was intended to promote the issuance of a patent within three years of the filing date of a patent application. The B guarantee provides one day of PTA to the patentee for every day beyond the three year mark. Neither the A nor the B guarantees cover delays caused by the patent applicant.

An overlap limitation – found at 35 U.S.C. § 154(b) – limits the foregoing guarantees to the extent that they overlap with each other. In Wyeth v. Kappos, the controversy revolved around the proper interpretation of this overlap limitation. The PTO argued that the overlap limitation meant the patentee could benefit only from the A guarantee or the B guarantee, but not from both. Wyeth, the patentee, argued that a patentee should benefit from both guarantees if warranted by PTO delay.

Siding with Wyath, the Federal Circuit held that both the A guarantee and the B guarantee could be applied to calculate PTA for a particular patent. As a consequence, any delay caused by the PTO during the first three years after the filing date would add PTA days under the A guarantee, while delay after three years would be compensated by additional PTA under the B guarantee.

As a result of this decision, there are conceivably a large number of recently-issued patents that may benefit from a recalculation of PTA. The PTO has created a procedure by which some patentees can have their PTA recalculated at no cost. Owners of recently-issued patents discuss this issue with their patent attorney or examine the details of their patent file history to determine if the term of their patent will be extended under the Federal Circuit’s new interpretation of 35 U.S.C. § 154(b).