In a Federal Register Notice issued May 15, 2014, the USPTO announced that its Patent Term Adjustment (PTA) calculator finally has been updated to implement the changes to the PTA statute embodied in the Technical Corrections Act which was enacted on January 13, 2013, but has not yet been updated to implement the changes required by the Federal Circuit’s decision in Novartis v. Lee. The Notice indicates that the USPTO is offering procedures for fee-free requests for recalculation of PTA in very limited circumstances for a very limited period of time, but will not refund fees paid for requests for reconsideration filed previously.

Additional PTA Under the Technical Corrections Act

The most significant substantive change to the PTA statute embodied in the Technical Corrections Act relates to the calculation of the time within which the USPTO must issue a first Office Action in a U.S. national stage application. Before the Technical Corrections Act, the fourteen month clock of 35 USC § 154(b)(1)(A)(ii) did not start running until “the date on which an international application fulfilled the requirements of section 371,” including the submission of an executed Inventor Oath/Declaration. The Technical Corrections Act revised this section of the PTA statute to provide that the fourteen month clock starts running on the national stage commencement date. (Please see this article for a discussion of other Technical Corrections Act changes to the PTA statute)

As I wrote previously, we have seen patents entitled to hundreds of days of additional PTA under the revised statute, because the USPTO took so long to issue a Notice of Missing Requirements, which in turn postponed the filing of the executed Inventor Oath/Declaration, and fulfillment of all § 371 requirements.

Although the Technical Corrections Act was enacted on January 13, 2013 and the USPTO published interim rules implementing the PTA changes on April 1, 2013, the USPTO will not start calculating PTA correctly under the amended statute until May 20, 2014. In the Federal Register Notice, the USPTO acknowledges that it “has experienced a significant delay in modifying the computer program used to calculate patent term adjustment,” but does not offer any explanation for the delay.

Additional PTA Under Novartis v. Lee

In Novartis v. Lee, the Federal Circuit determined that the USPTO’s rules misinterpreted the Request for Continued Examination (RCE) carve-out of the three-year, B delay section of the PTA statute, § 154(b)(1)(B)(i). While the USPTO has interpreted the statute such that no B delay PTA accrues once an RCE is filed, the Federal Circuit determined that ”time from allowance to issuance” should “undisputedly” be accounted for in the B delay calculation.

Although this decision was issued on January 15, 2014, the USPTO has yet to change its implementing regulations–let alone update its computer program–and the May 15 Federal Register Notice does not provide any indication of when (or even if) such changes will be made.

Limited Ability to Request Recalculation of PTA

Because of the “significant delay in modifying the computer program used to calculate patent term adjustment,” the USPTO is offering a limited option to a limited set of patents seeking additional PTA under the Technical Corrections Act amendments to § 154(b)(1)(A)(ii). In particular, the USPTO is “providing an optional procedure for patentees to request a recalculation of their patent term adjustment without a fee” as long as the following conditions are met:

• The patent resulted directly from a U.S. national stage application filed under 35 U.S.C. 371
• The request for recalculation is filed no later than July 31, 2014
• Recalculation is based only on errors “identified in this final rule”

The USPTO has created this form to be used to make a request for recalculation.

As emphasized in the Federal Register Notice, a request for recalculation under this procedure is not a request for reconsideration. Thus, the timing and fee requirements for a request for reconsideration do not apply. Moreover, the only PTA issues that can be raised are those relating to the fourteen month A delay calculation for U.S. national stage applications, and, possibly, a Novartis-type B delay issue in a patent that also has the fourteen month A delay issue.

Paying for PTA

Although the “request for recalculation” procedures may be a useful option for some patentees, it leaves a large number of patentees bearing the costs of the USPTO’s significant delay in updating its computer program to implement the changes of the Technical Corrections Act. As set forth in the Federal Register Notice, the USPTO will not refund any fees paid to support a request for reconsideration that already has been filed, even if the only issue raised related to the revised version of the statute. That means that the USPTO will keep the $200 per request that it has collected over the past sixteen months, between the enactment of the Technical Corrects Act and the updates to its computer program.

As best as I can tell from the Federal Register Notice, the USPTO has not updated its computer program to reflect the Novartis decision. Although the Federal Register Notice states that the USPTO has begun “to redetermine the patent term adjustment manually for those patentees who have timely challenged their patent term adjustment determination,” it does not indicate when the USPTO will revise its implementing rules or update its computer program for this issue. Quite to the contrary, the Federal Register Notice cautions that the USPTO “is not adopting ad hoc procedures for requesting a patent term adjustment recalculation specifically directed to the Federal Circuit decision in Novartis.” This means that if a patent is entitled to additional PTA under Novartis, the patentee will have to timely file a request for reconsideration and pay the requisite $200 fee.

Is the USPTO willfully defying the Federal Circuit decision by refusing to implement the court’s interpretation of the statute?

Caveat Patentee

That the USPTO took over sixteen months before it started calculating PTA under the Technical Correction Act and has not yet advised the public on how and when it will implement the Federal Circuit decision in Novartis underscores the fact that patentees cannot rely on the USPTO to properly calculate PTA. Patentees who want to ensure that their patents are awarded their full amount of PTA must take it upon themselves to calculate the PTA due under the current version of the PTA statute (as interpreted by binding judicial interpretations), and request reconsideration when the USPTO’s calculation comes up short.

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