Exelixis Revisited: Conflict in Determining Patent Term Adjustment

On January 28, 2013, the U.S. District Court for the Eastern District of Virginia issued a decision in Exelixis, Inc. v. Kappos (Case No. 1:12-cv-00574-LMB-TRJ), holding that the U.S. Patent and Trademark Office (“PTO”) has been correctly calculating patent term adjustments (“PTA”) for patent applications in which a Request for Continued Examination (“RCE”) was filed more than three years after the filing date of the application. The decision comes on the heels of a November 1, 2012 decision by the same name - Exelixis, Inc. v. Kappos (Case No. 1:12-cv-00096-TSE-TCB) - that held exactly the opposite.

A summary of the November 2012 Exelixis decision (“Exelixis I”) and a more detailed discussion of the issues involved in both Exelixis cases, can be found below.

Under the relevant statute, a patent applicant is entitled to receive an extension of patent term for each day beyond the three-year pendency of the application, excluding certain delays caused by the applicant. At issue in both Exelixis cases was whether, under the language of 35 U.S.C. § 154(b)(1), an applicant is entitled to PTA for the time an application spends in continued examination when an RCE is filed after the three-year pendency date. The PTO contended in both cases that the statute excludes from PTA any time consumed by continued examination, no matter when an RCE is filed. By contrast, Exelixis argued that the filing of an RCE after the three-year time period does not toll accruing B-delay, though it conceded that an RCE prior to the three-year time period does toll B-delay.

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