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Federal Circuit Holds that Continued Examination Does Not Count Toward Patent Office's Three-Year Application Processing Allotment

February 2014

In Novartis v. Lee (decided January 15, 2014), the Court of Appeals for the Federal Circuit addressed questions originally raised by the District Court for the Eastern District of Virginia in Exelixis, Inc. v. Kappos (decided November 1, 2012). Exelixis addressed the correct calculation of patent term adjustment (PTA) when a Request for Continued Examination (RCE) is filed in the United States Patent and Trademark Office (PTO) for a patent application. Prior to Exelixis, the PTO capped PTA when an RCE was filed. The court in Exelixis held that an RCE filed more than three years after an application’s filing date has no impact on PTA, and that the PTA continues to accrue. (See Wolff & Samson Patent Law Alert, November 20, 2012).

In the recent Novartis decision, the Federal Circuit generally agreed with the PTO’s practice of capping PTA after the filing of an RCE. However, the Federal Circuit also held that the time from a patent application’s allowance to issuance is not time spent in continued examination since examination typically ends when a Notice of Allowance is issued. Therefore, according to Novartis, the filing of an RCE prevents further accrual of PTA up until a Notice of Allowance, but the time from the Notice of Allowance to issuance will count toward the PTA.

Requests for reconsideration of PTA can be filed in the PTO within two months of a patent’s issuance. Alternatively, a civil action can be initiated in the District Court for the Eastern District of Virginia for PTA reconsideration within 180 days of a patent’s issuance.

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 Federal Circuit’s Novartis decision.

Jeffrey M. Weinick, Co-Chair, Wolff & Samson Intellectual Property Group
(973) 530-2028 |

Andrew A. Noble, Associate, Wolff & Samson Intellectual Property Group
(973) 530-2056 |

Joseph G. Fenske, Associate, Wolff & Samson Intellectual Property Group
(973) 530-2128 |