Federal Circuit Decision Impacts Patent Term Adjustment Calculation

Recently, the Federal Circuit issued a decision in Novartis v. Lee (2013-1160, Fed. Cir., Jan. 15, 2014) which alters Patent Term Adjustment (PTA) calculations for patents where a Request for Continued Examination (RCE) was filed during prosecution.

In the Novartis decision, the Federal Circuit agreed with the USPTO that the filing of an RCE tolls the running of the three year B-delay clock regardless of whether the RCE was filed before or after the 3 year date.  Thus, the Federal Circuit concluded that once an RCE is filed, no B-Delay is available for any time in continued examination.  (See Novartis at page 13).

The Federal Circuit also held that, for cases where an RCE was filed during prosecution, applicants could be entitled to B-Delay for the time period between allowance and issuance.  The USPTO currently excludes all time following the filing of an RCE from the B-Delay calculation.  However, in the Novartis decision, the Federal Circuit held that the time