District Court holds filing of Request for Continued Examination does not reduce patent term adjustment

On November 1, 2012, the District Court for the Eastern District of Virginia issued a decision in Exelixis v. Kappos (Case No. 1:12cv96), rejecting the U.S. Patent and Trademark Office’s (USPTO’s) interpretation of the statute which provides patentees with additional patent term to compensate for delays in prosecution caused by the USPTO. If upheld, this decision could result in extensions of patent term for many patentees where a request for continued examination was filed during prosecution and the USPTO has taken more than three years to issue a patent.

Patent Term Adjustment -

35 U.S.C. § 154 specifies certain patent term guarantees which, if not met, can serve as bases for a patent term adjustment (PTA). In particular, 35 U.S.C. § 154(b)(1)(B) provides an applicant with one day of PTA for every day an application is pending for more than three years (also known as “B delay”). The statute specifies that certain events are not included in this three year guarantee, including “any time consumed by continued examination of the application requested by the applicant.” 35 U.S.C. § 154(b)(1)(B)(i). The question at issue in Exelixis was whether § 154(b)(1)(B) requires that PTA be reduced for time due to the filing of a Request for Continued Examination (RCE) where the RCE is filed after the end of the three year guarantee period. The USPTO has interpreted the statute to mean that time due to the filing of an RCE is always excluded from the calculation of B delay, regardless of when the RCE is filed.

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