[author: Courtenay C. Brinckerhoff]

On November 1, 2012, the U.S. District Court for the Eastern District of Virginia (Ellis, III, J.) interpreted the patent term adjustment (PTA) statute (35 U.S.C. § 154) in a manner that could result in significant additional patent term for many U.S. patents. Exelixis, Inc. v. Kappos, No. 1:12cv96 (E.D. Va. Nov. 1, 2012). Stakeholders may recall the Wyeth decision that addressed how to identify and account for overlapping periods of USPTO delay. The Exelixis decision addresses the impact of the filing of a Request for Continued Examination (RCE) on the ability to accrue PTA when the USPTO fails to issue a patent within three years of its actual filing date, potentially opening up a large number of situations where patent applications may receive additional patent term. To take advantage of this decision, time-sensitive action may be needed in some situations as explained below.