Federal Circuit Grants Additional Time to Term of Patent from Continued Examination

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. (Robert Wagner on G+)

In an opinion issued Novartis AG v. Lee (No. 2013-1160, -1179) yesterday, the Federal Circuit clarified the standards for how much additional time the USPTO should add to the term of an issued patent under 35 U.S.C. § 154(b) when a patentee requests a continued examination.

When Congress changed the effective term of a patent from 17 years after issuance to 20 years after filing, it provided that extensions would be granted in certain circumstances where the delay in issuing the patent was due to the USPTO’s actions or inactions. The rules governing this extension are set forth in 35 U.S.C. § 154. In general, the term of a patent will be extended by one day for each day after three years of examination (subject to some exclusions), or when there are delays due to an interference, secrecy order, or successful appeal.

At issue in this appeal was the proper application of the provisions of 35 U.S.C. § 154(b)(1)(B)(i), which exclude “any time consumed by continued examination of the application requested by the applicant under section 132(b).” With respect to two patents, Novartis requested continue examination under § 132(b). The USPTO Director refused to grant any extensions for the time from the request until issuance of the patents.

Novartis first argued that § 154(b)(1)(B)(i) does not apply if the request for continued examination occurs more than three years after the filing of the application. The Federal Circuit rejected this argument because the purpose of the statute and the other aspects of the statutory structure did not support it. The Court did acknowledge that the language was unclear, but ultimately concluded that Novartis’s position was incorrect.

Novartis next argued that the § 154(b)(1)(B)(i) exclusion only applies to the time from the request to the notice of allowance (not to the date of issuance). The Federal Circuit agreed. The allowance to issuance time period is not related to the continued examination and involves time spent in the office of publication, not with the examiner. The Court felt it inappropriate to not credit the patentee with any delays caused during that part of the process. To the extent that there are any unusual delays relating to the examination after allowance, the USPTO can make appropriate adjustments where appropriate.

While this decision is not likely to affect many patents, practitioners should be aware of this change in these circumstances to make sure that the USPTO is properly calculating any extensions that are due to the patentee.