Does Patent Term Adjustment Need Adjustment?

Abstract

This paper examines the patent term adjustment (PTA) system enacted in the American Inventors Protection Act of 1999 and its implementation by the U.S. Patent and Trademark Office (PTO). First, the mechanics of the PTA statute are described. Next, the provision governing the manner in which overlapping periods of delay are treated is considered in connection with the recent D.C. District Court decision in Wyeth v. Dudas, which rejected the longstanding PTO interpretation of this provision. In addition, the disparate treatment in the PTA statute of delay caused by the applicant and delay caused by the PTO is examined. With this preliminary analysis in hand, this paper outlines the effects of three proposals to modify the present PTA system: 1) The position adopted by the plaintiffs in the Wyeth litigation; 2) a proposal by the PTO to eliminate certain types of PTO delay from the PTA calculation; and 3) a proposal by the author to address several inconsistencies in the present statute. To shed further light on these three proposals, empirical data from recently issued patents are considered