A Major Change in Patent Term Adjustment Calculus: How "A Valuable Tool in the Patent Prosecution Process" (RCEs) May Now Be Even More Valuable

A recent U.S. District Court ruling will likely have far-reaching implications for determining Patent Term Adjustment (PTA). On November 1, 2012, the U.S. District Court for the Eastern District of Virginia issued a decision in the case of Exelixis, Inc. v. Kappos (Case No. 1:12-cv-00096), ruling that a Request for Continued Examination (RCE) filed in a patent application more than three years after the effective filing date of the application has no impact on PTA as determined under 35 U.S.C. § 154(b) (“the PTA statute”). Usually, an RCE reduces the PTA, but the district court ruled that if initiated more than three years after the effective filing date, an RCE would not reduce the PTA at all. This will potentially extend the term of some recently issued patents and numerous to-beissued patents. Some commentators have estimated that this ruling could impact approximately 10% of recently issued patents. Depending on the patent, the effects of the decision could amount to additional PTA of days, weeks, or in some cases, even years.

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