A Minor Shift In Patent Term Adjustment Calculations

Novartis AG v. Lee; Exelixis, Inc. v. Lee

Presented with a challenge to patent term adjustments as determined by the Patent and Trademark Office (PTO) under 35 U.S.C. § 154(b), the U.S. Court of Appeals for the Federal Circuit held that post-allowance delays are  attributable to the PTO, and therefore, where there is a request for continued examination, the post-allowance period must be included in the patent term adjustment calculation. Novartis AG v. Lee, Case Nos. 13-1160, -1179 (Fed. Cir., Jan. 15, 2014) (Taranto, J.); Exelixis, Inc. v. Lee, Case No. 13-1175 (Fed. Cir. Jan., 15, 2014) (per curiam).

The 1994 statute changing the manner of calculating a patent's effective term (from 17 years from the date of issuance to 20 years from the earliest claimed priority date) occasioned a need to account for Patent and Trademark Office (PTO) delays that effectively reduced a patent's term. In 1999 Congress enacted 35 U.S.C. § 154(b)(1), guaranteeing patent applicants a