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Virginia Court Holds that Patent Office Calculation of Patent Term Adjustment is Incorrect in Certain Situations

November 20, 2012

The District Court for the Eastern District of Virginia recently held in Exelixis, Inc. v. Kappos that the United States Patent and Trademark Office (PTO) has been incorrectly calculating patent term adjustment (PTA) in certain situations. As such, some patents may be entitled to additional term, thereby extending the expiration dates of these patents.

According to current PTO policy, patent term adjustment stops accruing upon the filing of a Request for Continued Examination (RCE), regardless of when the RCE is filed. The Court in Exelixis, based on its reading of the PTA statute, held that an RCE filed more than three years after an application’s filing date has no impact on PTA, and that PTA term continues to accrue. As such, applications in which an RCE was filed more than three years after the application filing date may be entitled to additional patent term.

Requests for reconsideration can be filed in the PTO within two months of the patent’s issue date. However, the PTO has not yet commented on the Exelixis case and it is unclear whether the PTO will adjust PTA based on the case.

An alternative to a request for reconsideration in the PTO may be the initiation of a civil action in the U.S. District Court for the Eastern District of Virginia within 180 days of a patent’s issuance in order to have the patent’s PTA reconsidered.

Please contact us if you would like to discuss whether any of your patents may be entitled to additional patent term in light of the Exelixis case.

For more information, please contact:
Jeffrey M. Weinick, Co-Chair, Intellectual Property Group | jweinick@wolffsamson.com | (973) 530-2028
Andrew A. Noble, Associate | anoble@wolffsamson.com | (973) 530-2056
Joseph G. Fenske, Associate | jfenske@wolffsamson.com | (973) 530-2128