Summary

On January 15, 2014, the U.S. Court of Appeals for the Federal Circuit held that patentees are eligible for patent term adjustment (PTA) for the period between a Notice of Allowance and issuance if the period occurs more than three years after filing. Novartis AG v. Lee, Docket Nos. 2013-1160, -1179 (Fed. Cir. Jan. 15, 2014). Although the Federal Circuit rejected the broader argument advanced by the patentees in the appeals and numerous follow-on suits and petitions, the ruling will extend the term of many patents by about four months and is of particular import to pharmaceutical and medical device companies.

Applicants and patentees with recently or soon-to-be issued patent applications in which a Request for Continued Examination (RCE) was filed and having more than three years of pendency should review these patents to identify whether additional patent term adjustment would be of value and consider filing petitions for review of PTA within the two-month-from-issue deadline (extendible for an additional five months by payment of increasing monthly fees).

Additionally, this decision reinforces the benefits of avoiding Requests for Continued Examination whenever possible (e.g., by carefully considering whether claim amendments that could bring about a "final" Office Action are necessary and whether appeal or pre-appeal proceedings could achieve allowance of an application while potentially accruing more PTA than an RCE). Prosecution strategies to maximize PTA awards are discussed here in a recent article by Saul Ewing associate Brian Landry.