1. 1 United States Patent and Trademark Office PTA Post Wyeth USPTO OPLA - Kery A. Fries PTA Post Wyeth Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010 )

2. United States Patent and Trademark Office 2 PTA Post Wyeth USPTO OPLA - Kery A. Fries PTA Post Wyeth On January 7 th, 2010 Federal Circuit decided Wyeth v. Kappos Federal Circuit determined the statutory construction of 35 USC 154(b)(2)(A) Federal Circuit determined that the phrase “to the extent that periods of delay attributable to grounds specified in paragraph (1) overlap…” means same calendar days Accordingly, “A” delays and “B” delays overlap only if such delays occur on the same calendar day

3. United States Patent and Trademark Office 3 PTA Post Wyeth USPTO OPLA - Kery A. Fries PTA Post Wyeth Federal Circuit decision means that some patentees may be receiving more patent term adjustment under the CAFC interpretation than under the USPTO interpretation of 35 USC 154(b)(2)(A) USPTO is modifying the computer program to be consistent with the Wyeth decision USPTO is deciding petitions consistent with the interpretation of Wyeth v. Kappos

4. United States Patent and Trademark Office 4 PTA Post Wyeth USPTO OPLA - Kery A. Fries PTA Post Wyeth The USPTO created an expedited procedure to address Wyeth-only petitions USPTO form (PTO/SB/131) is for requesting reconsideration of PTA when the sole basis for the request is Wyeth v. Kappos The USPTO form PTO/SB/131 provides that a patentee need not request reconsideration under 37 CFR 1.705(d) or pay the fee under 37 CFR 1.18(e)

5. United States Patent and Trademark Office 5 PTA Post Wyeth USPTO OPLA - Kery A. Fries Eligibility for expedited procedure: Any patent issued before March 2, 2010 that was not issued more than 180 days before the request for recalculation in view of Wyeth was filed An applicant eligible to file the form need not submit a petition and accompanying fee under 37 CFR 1.183 if the patent issued more than 2 months but less than 180 days before the filing of the form

6. United States Patent and Trademark Office 6 PTA Post Wyeth USPTO OPLA - Kery A. Fries Eligibility for expedited procedure: (cont.) A patentee can also use PTO/SB/131 if the request for recalculation is more than 180 days after the grant of the patent but (1) within two months of a decision by the Office and (2) the sole basis for review of the decision is pre-Wyeth interpretation of the statutory language of 35 USC 154(b)(2)(A)

7. United States Patent and Trademark Office 7 PTA Post Wyeth USPTO OPLA - Kery A. Fries Eligibility for expedited procedure: (cont.) The Office will decide a request for reconsideration of patent term adjustment under 37 CFR 1.705(d) even if the decision date is more than 180 days after grant of the patent if: –patentee filed a timely request for reconsideration of patent term adjustment under 37 CFR 1.705(d) and no decision has been rendered by the USPTO (no PTO/SB/131 form should be filed)

8. United States Patent and Trademark Office 8 PTA Post Wyeth USPTO OPLA - Kery A. Fries Fee Waivers The Office cannot refund petition fees in patents where the patentee filed the fee pursuant to: –37 CFR 1.705(d), –37 CFR 1.705(d) in combination with a petition under 37 CFR 1.183, or –Request to invoke supervisory authority under 37 CFR 1.181 The fee waiver(s) are only applicable to requesters who use the PTO/SB/131 form

9. United States Patent and Trademark Office 9 PTA Post Wyeth USPTO OPLA - Kery A. Fries Ineligibility, Alternative Option The Office will not entertain any other request for reconsideration of PTA under 37 CFR 1.705, 37 CFR 1.181, 1.183, 1.322, or 1.323 filed more than 180 days after patent grant The procedure is an alternative remedy to 35 USC 154(b)(4). Patentees continue to have the statutory option to file a civil complaint in the District Court of the District of Columbia within 180 days of the patent grant

10. United States Patent and Trademark Office 10 PTA Post Wyeth USPTO OPLA - Kery A. Fries PTO/SB/131 Form 10

11. United States Patent and Trademark Office 11 PTA Post Wyeth USPTO OPLA - Kery A. Fries PTO/SB/131 Form (cont.) 11

12. United States Patent and Trademark Office 12 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 1 Post Wyeth (Facts) Application filed under 35 USC 111(a) on 5/17/04 USPTO mails NF rejection on 2/22/07 RCE filed on 1/14/08 No “C” delays No deductions under 37 CFR 1.703(b)(1)-(4) Applicant delay is 95 days Patent issues on 9/1/ 2009

13. United States Patent and Trademark Office 13 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 1 Post Wyeth (Calculation) “A delays” 585 days (beginning on 7/18/05-2/22/07) “B delays”= “BNet”=241 days “Bmax”=241 days (beginning on 5/18/07-1/13/08) “BDeductions” = 0 days “BNet” =“Bmax-BDeductions” 241-0=241 days “A” delays and “B” delays overlap=0 days (no calendar days in common) Total PTA = “A Delays” + “B” +”C” – (overlapping delays between A and b and A and C)- Applicant delays 585 + 241+ 0 –(0) -95=731 days

14. United States Patent and Trademark Office 14 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 1 Timeline No overlap between A and B PTA= 585 + 241 + 0 - 0 - 95 = 731 5/17/07

15. United States Patent and Trademark Office 15 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 2 Post Wyeth (Facts) Application filed under 35 USC 111(a) on 6/12/02 USPTO mails NF rejection on 7/6/05 RCE filed on 2/9/06 No “C” delays No deductions under 37 CFR 1.703(b)(1)- (4) Applicant delay 122 days Patent issues on 9/1/2009

16. United States Patent and Trademark Office 16 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 2 of Post Wyeth (Calculation) “A” delays =694 (8/13/03-7/6/05) “B” delays = “BNet”=241 days “Bmax”= 241 days (6/13/05 - 2/8/06) “Bdeductions” = 0 days “Bnet” = “Bmax”-”B deductions”= 241-0=241 days Overlapping between A and B=24 days (6/13/05 - 7/6/05) Total= “A”+ “B” + “C”- (overlapping between A and B and A and C) – applicant delay Total = 694+241+0 (-24) -122=789 days

17. United States Patent and Trademark Office 17 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 2 Timeline Overlap between A and B = 24 days PTA= 694 + 241 + 0 - 24 - 122 = 789

18. United States Patent and Trademark Office 18 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 3 Post Wyeth (Facts) Application filed under 35 USC 111(a) on 2/1/02 USPTO mails NF rejection on 12/3/04 “C” delays for successful appellate review (notice of appeal filed 8/2/05 and Bd. Decision mailed on 3/1/06) Deductions under 37 CFR 1.703(b)(1)-(4)for period beginning on 8/2/05 and ending on 3/1/06 NO RCE No Applicant delays Patent Issues on 9/2/08

19. United States Patent and Trademark Office 19 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 3 Post Wyeth (Calculation) “A” delays= 612 days “B” delays= “Bnet”=1097 days “Bmax”= 1309 days (2/2/2005- 9/2/08) “B deductions” = 212 days (8/2/05-3/1/06) “Bnet” = Bmax- B deductions= 1309-212=1097 days “C” delays= 212 days Overlapping between “A” and “B”=0 days Total= A+ “B” + C- (overlapping between “A and B” and “A and C”) – applicant delay Total= 612 + 1097 + 212 –(0) -0=1921 days

20. United States Patent and Trademark Office 20 PTA Post Wyeth USPTO OPLA - Kery A. Fries Example 3 Timeline Overlap between A and B = 0 days PTA= 612 + 1097 + 212 - 0 - 0 = 1921