Obstacles To Correcting Patent Term Adjustments

With the much anticipated opinion of Wyeth v. Kappos, No. 2009-1120, 2010 WL 27184 (Fed. Cir. Jan. 7, 2010), the Federal Circuit overturned one aspect of the PTO's methodology of calculating the amount of a patent term adjustment (PTA) an applicant is due under the Patent Term Guarantees of 35 U.S.C. § 154(b). While Wyeth will apply to calculating PTAs going forward, procedural obstacles may foreclose patentees from obtaining a correction of prior PTA determinations for issued patents or patent applications in which the issue fee has already been paid.

As part of switching to a patent system where the term of a utility patent is measured twenty years from the patent's earliest effective filing date, rather than seventeen years from its issue date, Congress enacted certain "Patent Term Guarantees" to ensure that delays by the PTO in processing a patent application would not unfairly deprive a patentee from enjoying the full term of its patent. See generally, Robert