Not all patents that take a long time to issue are awarded PTA, however. The PTA statute provides that the PTA award is “reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution.” Thus, if an applicant delays the examination process more than the PTO, the patent may not receive any PTA, even if it took much longer than three years to issue.
Applicants should be aware of the PTA regulations that define certain actions as constituting delay. For example, while applicants may not be surprised to learn that extending response periods can count as delay, they might not realize that filing a preliminary amendment shortly before the first office action is issued or filing a supplemental response can result in charges of delay.
Applicants also should be aware of the impact of certain patent strategies on PTA. For example, filing a request for continued examination (RCE) stops the accrual of any further B delay, although A delay still may accrue. On the other hand, abandoning an application in favor of a continuation application erases all delay accrued in the parent application and re-starts the clock with the continuation application filing date. Thus, if an application has accrued significant delay, applicants may want to consider filing an RCE instead of a continuation application in order to preserve that possible additional patent term.
Applicants also may wish to consider the potential impact on PTA when deciding when to file divisional or continuation applications to pursue different subject matter. While applicants often wait to file such applications until the parent application is close to grant, this may not be the best strategy if maximizing patent term is a primary concern.
The 20-year term of divisional and continuation applications runs from the parent application filing date, but the PTA clock for such applications does not begin to run until the divisional or continuation application itself is filed. If the parent application experiences significant examination delay, its term may be lengthened by the PTA statute, but the term of divisional and continuation applications will not be adjusted unless those applications also experience further delay.
Applicants also should take care when filing terminal disclaimers. Terminal disclaimers take precedence over PTA; thus, a terminal disclaimer can cut short patent term that otherwise would be lengthened by PTA.
Terminal disclaimers often are filed in applications directed to overlapping subject matter, as an expedient way to overcome an obviousness-type double patenting rejection. Applicants should keep in mind that if the later-filed application experiences examination delay, PTA cannot extend its term beyond the term of the disclaimed patent. Thus, applicants should consider arguing against obviousness-type double patenting rejections in appropriate circumstances, particularly if the rejected application already has accrued significant PTA delay, or is likely to be delayed by an appeal.
The Wyeth case also demonstrates the value of scrutinizing PTO rules and regulations to confirm that they comply with the governing statute. The PTO has admitted to other across-the-board PTA calculation errors where it was not following its own regulations, but only after a patentee challenged the PTO’s calculations. The PTA statute and regulations are complicated, and further challenges may be on the horizon.
For example, it is suggested that B delay for U.S. national phase applications should be measured from the PCT filing date, not any national phase date, in order to give full effect to the PCT requirement that “the [international] filing date shall be considered to be the actual filing date,” and the related statute that provides that “[a]n international application designating the United States shall have the effect, from its international filing date . . . of a national application . . . filed in the [PTO].”
Under this interpretation, the three-year period for B delay would run from the PCT filing date, which could be as much as 30 months before the national phase filing date, virtually guaranteeing B delay for U.S. national phase applications. It does not appear that anyone has challenged this PTO interpretation of the PTA statute.
The Wyeth decision provides additional opportunities to maximize patent term and enhance patent value by developing patent strategies that take the PTA provisions into account. Although it is possible that the PTO will request rehearing of the Wyeth decision or seek review by the Supreme Court, applicants and patentees should consider taking immediate relevant action regarding PTA and contact their patent counsel to ensure that appropriate plans are in place to take full advantage of the additional patent term that may be available.