The Patent Office / Miscalculates Patent Term / Extensions Increase

Wyeth v. Kappos, [2009-1120] (January 7, 2010)[RADER, Plager, and Moore] The Federal Circuit affirmed summary judgment that Wyeth was entitled to extended patent term adjustments under 35 U.S.C. § 154(b) due to the Patent and Trademark Office’s delay in prosecuting their patent applications.
DISCUSSION: 35 U.S.C. § 154(b)(1) provides two separate extensions of patent term, one under part (A) for delays occasioned by failure of the USPTO to meet certain deadlines, and one under part (B) for pendency greater than 3 years. These are subject to reduction for overlap, which the USPTO interpreted as limiting the patentee to the greater of the part (A) extension or the part (B) extension, while Wyeth argued that only the part (A) that occurred after three years from filing is a true overlap. For one patent, the USPTO determined an extension of 462 days, while Wyeth calculated an extension of 756 days, and for the other patent, the USPTO determined a 492 day extension, while Wyeth determined a 722 day extension.
On a matter of pure statutory construction, the Federal Circuit agreed with Wyeth that the USPTO was calculating the extension wrong, and that the extension under parts A and B don't overlap, except when the A extension is for delays beyond the third anniversary of filing.