15Apr 2015

Big Change in Patent Term Extension Timeframes by Silvia Salvadori, PhD.{3:25 minutes to read} In light of the decision by the U.S. Court of Appeals for the Federal Circuit in Novartis AG v. Lee, The United States Patent and Trademark Office (USPTO) has revised the rules pertaining to patent term adjustment. Based on this court decision, many future U.S. patents may be entitled to a longer term, generally from a few days to a few months.

In Novartis, the Federal Circuit reversed the District Court ruling and remanded for a redetermination of proper patent term adjustment (PTA) determination. The Federal Circuit affirmed Novartis’s position that the USPTO had incorrectly calculated the B delay in situations where a Request for Continuing Examination (RCE) is submitted during prosecution.

  • “A” delays accrue when the USPTO fails to act in accordance with set time frames (such as the issuing of a first office action within 14 months from filing, issuing a second office action or allowance within 4 months of a response or the issuing of a patent within 4 months of the Issue Fee payment).
  • “B” delays accrue when the USPTO fails to issue a patent within three years of the actual filing date of the patent application.
  • “C” delays accrue when the application is involved in an interference or appeal or is subject to a secrecy order.

The Federal Circuit rejected the USPTO’s original interpretation of the statute 35 U.S.C. § 154(b)(1)(A)-(C) that once an RCE was filed, the application no longer accrues “B” delay, although it might still accrue “A” delay and/or a “C” delay.  That is, the USPTO had interpreted Section 154(b)(1)(B)(i) to mean that filing an RCE cuts off the “B” delay period.

The Federal Circuit held that the time consumed by filing an RCE does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. Accordingly, the Office has now revised its the rules of practice to comply with this timeframe.

Patent holders who might have their patents impacted by this important decision should review their portfolios and identify those cases where additional patent term Adjustment may now be available to them.


Silvia Salvadori, PhDSilvia Salvadori, PhD.
(212) 897-1938