In our January 2010 newsletter, we reported on the Federal Circuit's recent holding that the USPTO erroneously calculated patent term adjustments (PTAs) under the "overlap" provision of 35 U.S.C. 154(b)(2)(A). See also Wyeth v. Kappos, No. 2009-1120 (Fed. Cir., Jan. 7, 2010).
The USPTO is now allowing patent holders to request a fee-free recalculation of a patent's PTA, if the request meets the following criteria:
1. The request must state that the sole basis for requesting the recalculation is the USPTO's pre-Wyeth interpretation of 35 U.S.C. 154(b)(2)(A).
2. The patent must issue before March 2, 2010, and the request must be submitted no later than 180 days after issue.
Notably, patents issued before August 2009 and after March 2, 2010 are not eligible for fee-free PTA recalculation. The USPTO has not yet provided a fee-free mechanism to request PTA recalculation under Wyeth for patents issued before August 2009. Also, the USPTO indicates that as of March 2, 2010, a new computer program will calculate PTAs in compliance with the Wyeth holding, so that recalculations of pre-Wyeth PTAs will no longer be necessary.
Vol. 53, June 2010