Federal Circuit Eases Patent Term Adjustment Calculation in Favor of Applicants

The Court of Appeals for the Federal Circuit, in Supernus Pharmaceuticals, Inc. v. Iancu, recently held that the United States Patent and Trademark Office (USPTO) has been incorrectly calculating patent term adjustment (PTA) in certain circumstances. As a result of this ruling, patent owners may be entitled to additional patent term.

The USPTO has been incorrectly reducing PTA where an information disclosure statement (IDS) has been filed after the filing of a Request for Continued Examination (RCE). This situation is likely to arise when a search report from a foreign patent office identifying references that need to be disclosed to the USPTO is received after filing of an RCE. The USPTO rationale for reducing PTA in this situation was that the filing of the IDS after the filing of an RCE was a failure by the applicant to engage in reasonable efforts to conclude prosecution.

The Court in Supernus held that the filing of an IDS after an RCE has been filed is not a failure to engage in reasonable efforts to conclude prosecution of an application if the applicant could not file the IDS earlier because, for example, the references cited in the IDS were not known to the applicant earlier. In such a situation, reduction of patent term based on the IDS filing is improper. As a result of this ruling, certain applications in which an IDS was filed after the filing of an RCE may be entitled to additional PTA.

Requests for reconsideration of PTA can normally be filed in the USPTO within two months of the patent’s issue date. The USPTO has not yet commented on the Supernus case and it is unclear whether the USPTO will adjust PTA of patents on its own initiative or if it will extend the time period to request reconsideration of the PTA.

An alternative to a request for reconsideration of PTA in the USPTO 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.