The USPTO is organized to give examiners every possible reason to reject unallowable patent applications (and pressuring them to do so, through mechanisms like OPQA review). The courts are also giving examiners ever-increasing options for rejecting broad claims and narrowing patent scope. The logical result is that for patents that survive the brutal gauntlet of patent examination, the USPTO should celebrate the patented achievement and promote the patentee’s rights.
But this presumption runs contrary to one of the USPTO’s consistent policies over the past decade, which raises the question: Why does the USPTO consistently oppose patent term adjustment?
Until 1995, the maximum term of a U.S. patent was 17 years from its date of issuance. In order to address some shady practices by the quintessential 1990’s patent troll, the patent term was altered to a calculation of 20 years from filing (and, for applications claiming priority, from the filing date of the earliest U.S. application).
However, it quickly became apparent that some patentees were being unfairly deprived of patent term due to protracted examination. However, it quickly became apparent that the extremely variable duration of patent examination was unfairly reducing this patent term – and that some examiners were tactically using delays to exclude patent-worthy inventions from any patent protection. 1
To this end, in 1999, Congress enacted the America Inventor’s Protection Act, which made a number of small tweaks to the patent act. One such tweak was the “Patent Term Guarantee Act,” which “extends the term of patents to compensate for certain PTO processing delays, and for delays in the prosecution of applications pending more than three years.” The details are provided in 35 USC § 154.
The upshot is that when a patent issues, the USPTO performs a calculation of how much extra time was consumed by the PTO, and provides a statement of a number of days to be added to the end of the maximum patent term (presuming the applicant pays maintenance fees for the entire life of the patent).
While the patent term adjustment might have been envisioned as an unusual measure, virtually every issuing patent today is awarded an extensive patent term adjustment – the average is 18 months. The USPTO is open and earnest in its acknowledgment of its own delays. And indeed, one cause of the delay is the USPTO’s continued efforts to exert more stringent efforts at examination, at the insistence (and with the assistance) of the CAFC and Supreme Court.
An interesting facet of this calculation is that although 35 USC § 154 is very detailed, the inherent complexity of the patent examination process makes it inevitable that some scenarios are not fully spelled out. This gives the USPTO some latitude in setting the calculation to suit these scenarios.
It is therefore surprising that the USPTO has consistently taken positions that reduce the patent term adjustment calculation in order to limit patent term.
- Wyeth v. Kappos (2010): The CAFC finds that the USPTO’s calculation underestimates the examination delay, and therefore undercalculating the patent term adjustment.
- Exelixis v. Kappos (2012): The CAFC finds that the USPTO’s calculation is underestimating the examination delay in another way, and therefore further undercalculating the patent term adjustment.
- Novartis v. Lee and Exelixis v. Lee (2014): The CAFC finds that the USPTO has improperly denied some applicants from claiming the benefit of the earlier Exelixis decision that entitles them to additional patent term adjustment.
In each of these cases, the USPTO has taken a position that reduces patentees’ entitlement to patent term adjustments. And if the USPTO were taking a position that incorrectly expanded such entitlement, lawsuits against the USPTO by competitors who are eager to use technology when patents expire (which, in some fields, represent an extremely lucrative market) would be fast and furious.
This pattern raises the question: Why is the USPTO hostile to patent term adjustment?
On the one hand, the USPTO is facing two sources of pressure: pervasive complaints about the “quality” of the patent examination process, and extensive anxiety over patent trolling. However, both areas are being addressed 2 – and neither issue really has anything to do with patent term, i.e., any extension at the tail end of the patent term past the 20-year mark.
And on the other hand, it seems odd for the USPTO to advocate against the rights of patentees. After all, it is the sole agency in the United States that is empowered to issue patent rights; why would it consistently seek to shorten, and hence devalue, the value of this right? And while the USPTO is deeply interested in ensuring that only the right patents issue, patent term adjustments only affect patents that have not been ruled invalid for 20 years following the priority date!
The only motivation I can imagine for the USPTO’s consistent reluctance is to reduce its public appearance as a source of chronic, unreasonable administrative delay. This is definitely a sore spot, and the USPTO is eager to contain it – but doing so by reducing legitimate patentees’ rights seems like a clear misprioritization of patent policy.
- According to the Testimony in Senate committee hearings:
While interferences and appeals are the most obvious sources for delays, there are innumerable other ways in which the issuance of a patent can be delayed during the review period at the Patent and Trademark Office. … Some of the miscellaneous causes are applications abandoned by PTO error; backlog of unexamined applications delayed by loss of files or responses by PTO; suspensions of prosecution by the PTO; delays caused by PTO’s failure to consider arguments/evidence; withdrawal from issue by the PTO; reopening of prosecution involving a new ground of rejection or new rationale after final rejection or appeal; and new restrictions among claims to the same type of subject matter as were pending prior to the first restriction requirement or first office action.
Of course, today’s PTO does a better job of tracking the status of cases (but still imperfect, as demonstrated by the RCE Hole and the need for the “Clearing the Oldest Patent Applications” (“COPA”) Program). However, the remainder of this complaint from 1996 remains surprisingly prescient. ↩
- See, e.g., the Hirshfield guidance on the Alice Corp. v. CLS Bank case; the Covered Business Method Review program; the new Inter Partes Reexamination program; and the Peer-to-Patent Program. ↩