Court Determines USPTO Is Undercalculating Patent Term Adjustments

by Morgan Lewis

[authors: Robin M. Silva and Elizabeth M. N. Morris]

District court's decision could lead to a minimum of 17 years of post-issuance patent terms for most standard patents.

On November 1, Judge T. S. Ellis, III, of the U.S. District Court for the Eastern District of Virginia ruled in Exelixis, Inc. v. Kappos[1] that the U.S. Patent and Trademark Office (USPTO) has been undercalculating patent term adjustments (PTAs) due to a misinterpretation of the "plain and unambiguous" language of the PTA statute, 35 U.S.C. § 154(b)(1)(B).

The court specifically determined that a request for continued examination (RCE) filed after the first three years of prosecution should not impact the amount of PTA provided. This may lead to the availability of additional PTA for many patents. Accordingly, all patent owners that could benefit from PTA should review their portfolios to evaluate the impact of this decision.


In 1994, the PTA statute was enacted when patent terms were changed from 17 years from issuance to 20 years from filing in the Uruguay Round Agreements Act. The theory was that most patents should issue approximately three years after they are filed, and the PTA statute was created to extend the length of a patent term in the event that certain delays occurred in the processing of the application (e.g., interference delay, secrecy orders, and appellate review).

In 1999, Congress amended the PTA statute to include section 154(b), which is sometimes referred to as the Patent Term Guarantee Act of 1999. For example, 35 U.S.C. § 154(b)(1)(B) is titled "Guarantee of no more than 3-year application pendency."

However, many long-pending patents have been receiving significantly less than the promised 17-year term because the USPTO has not been granting additional terms where the delay resulted from the filing of RCEs, a common practice in such applications.

Exelixis Decision

The question presented to the Exelixis court was the following:

Whether 35 U.S.C. § 154(b)(1)(B) requires that an applicant's PTA be reduced by the time attributable to an RCE, where, as here, the RCE is filed after the expiration of [the American Inventors Protection Act of 1999's (AIPA's)] guaranteed three year period.

The court analyzed section 154 in its entirety and concluded that the exceptions to the three-year rule apply only to the original three-year time period and not to any time thereafter, such as an RCE filed after the initial three-year period. The court concluded the following:

[Section] 154's plain language neither addresses nor requires that an applicant's PTA be reduced by the time required to process an RCE that is filed after the expiration of the three year period.

The court further noted that this reading is "firmly supported by § 154(b)'s structure and purpose. The statute's purpose is to ensure that an applicant is provided with a PTA remedy for delays in examination and processing attributable to the [USPTO] and to reduce any PTA by delays attributable to the applicant." The court pointed out that the USPTO's current practice of subtracting the time, in essence, "punishes" the applicant even though the submission of an RCE is not considered one of the applicant delays listed in § 154(b)(2)(C), and the USPTO had stated that an RCE is "a valuable tool in the patent prosecution process."


For any patent issued in the last two months, a request for reconsideration can be filed at the USPTO for the length of term to be reviewed based on the Exelixis decision. For any patent that was issued in the last six months, the patent owner can challenge the patent term in district court.

It is anticipated that the USPTO will challenge this decision. It may do so on the grounds that the decision subverts the primary goal of the Uruguay Round Agreements Act to eliminate an incentive to keep an application pending for a long period of prosecution prior to issuance (i.e., submarine patents).

If the USPTO loses on appeal, it may provide an opportunity to submit recently issued patents for recalculation as it did following the Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010), decision.

In the meantime, especially for patents that have high value at the end of their term, patent owners should consider filing a request for reconsideration of PTA or a challenge of PTA in district court.

[1]. Exelixis, Inc. v. Kappos, No. 1:12cv96 (E.D. Va. Nov. 1, 2012), available here.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morgan Lewis | Attorney Advertising

Written by:

Morgan Lewis

Morgan Lewis on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.