Patent Terms

In Exelixis v. Kappos, the district court for the Eastern district of Virginia held that the Patent Office had not been calculating patent terms correctly.

Specifically, the district court held that the patent term adjustment (PTA) rules do not treat the filing of an RCE to be an applicant delay (as currently viewed by the PTO). The “B” delay provides an adjustment for every day past three-years from the file date to the grant date. The PTO stops this delay after the RCE is filed. The court says, no, you can’t do that. If this becomes law, it may discourage the PTO from sitting on RCEs, which will be a very good thing!

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In Merck v. Hi-Tech, the Fed. Cir. upheld a lower court ruling extending Merck's patent for a glaucoma treatment that was delayed as a result of the FDA approval process, despite the fact that Merck disclaimed the terminal portion of the patent term to obviate a double patenting rejection. The Fed. Cir. held that the language of 35 U.S.C. § 156 “shall be extended” does not allow for exceptions in the case of a terminal disclaimer.

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• Another take and comments

In Merck v. Hi-Tech, the New Jersy District Court extended Merck's patent for a glaucoma treatment that was delayed as a result of the FDA approval process, despite the fact that Merck disclaimed the terminal portion of the patent term to obviate a double patenting rejection.

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