Recent Court Decision Opens Door for Longer Patent Terms

by Wilson Sonsini Goodrich & Rosati

A recent district court decision in the matter of Exelixis, Inc. v. Kappos1 opens the door for patent owners to extend the lives of their patents. The decision will be especially important for select pharmaceutical, biotech, medical device, and licensed patents where extending patent life can result in significant additional revenue.

The U.S. Patent and Trademark Office (USPTO) legally is required to increase a patent’s lifetime to compensate for undue delays in the patent application examination and grant processes. This increase in patent lifetime is termed “patent term adjustment” (PTA). A 2011 survey2 indicates that approximately 80 percent of recent patents were given PTA, and the average PTA was roughly 600 days (over a year and a half). Even so, the USPTO has been shortchanging the PTA of some patent owners.

By law and with provisos, a patent's term must be extended—on a day-per-day basis—for every day beyond three years after a patent application's actual filing date until the patent issues.3 The USPTO historically has taken the position that requesting continued examination (RCE) of a patent application after three years from the patent application's actual filing date tolls the day-per-day increase in patent lifetime.

In Exelixis, the court determined that the USPTO has been incorrectly applying the law. Exelixis held that requesting continued examination of a patent application after three years from the application's actual filing date does not toll the day-per-day increase in patent lifetime. In the wake of Exelixis, the USPTO's PTA grants are likely too short for many patents. The hypothetical figure below illustrates this point:


This decision may yet be appealed by the USPTO. Recommended actions, subject to the review of each individual case, include the following:

  1. If a patent application is pending, it may be advisable to wait to submit an RCE until after three years from the application's actual filing date in order to maximize PTA.
  2. For patents that were recently issued, or that will issue in the near term, patent owners should consider filing a petition requesting reconsideration of the PTA calculated by the USPTO to appropriately extend their patent term.

For Wilson Sonsini Goodrich & Rosati clients, our calculations have been adjusted to include additional PTA conveyed by Exelixis. Quick action is required to preserve the right to increased PTA; otherwise, increased PTA could be lost.

For additional information or assistance in evaluating and pursuing enhanced PTA, please contact Vern Norviel, Jeff Guise, Peter Munson, James Heslin, Samir Elamrani, U.P. Peter Eng, Michael Hostetler, Michael Rosato, Karen Wong, or Esther Kepplinger.

1 Exelixis, Inc. v. Kappos, Case No. 1:12cv96, 2012 U.S. Dist. LEXIS 157762 (E.D. Va. November 1, 2012).

2 "Patent Term Adjustment Statistics," available at

3 35 U.S.C. § 154(b)(1)(B).

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.

© Wilson Sonsini Goodrich & Rosati | Attorney Advertising

Written by:

Wilson Sonsini Goodrich & Rosati

Wilson Sonsini Goodrich & Rosati 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.
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.