Intellectual Property LawFlash

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1 U.S. Patent and Trademark Office Decides to Modify Process for Calculating Patent Term Adjustment January 29, 2010 The United States Patent and Trademark Office (USPTO) recently agreed to modify how Patent Term Adjustment (PTA) is calculated in view of the recent Federal Circuit decision that overturned the way that the USPTO calculated PTA. The USPTO has stated that modifications to its software that calculates PTA are underway and are expected to be completed by March 2, 2010.

In the interim, the USPTO has further stated that it is implementing a means for recalculating PTA for recent patentees. In lieu of filing a petition with the required fee under 37 C.F.R. § 1.705(d), the USPTO will accept a Request for Recalculation without any further fee required.

The Request for Recalculation is available only for patents issued before March 2, 2010 and must be filed no later than 180 days after the issue date. The USPTO will only accept the Request for Recalculation for alleged errors specific to the Federal Circuit 9s decision. For patents issued after March 2, 2010, a request for reconsideration under 37 C.F.R.

§ 1.705(d) and the accompanying fee will be required within two months of the date that the ... more. less.

patent issues. The USPTO has also advised that for patentees who previously filed a request for reconsideration and are awaiting a decision, those requests will now be considered, based on the Federal Circuit 9s decision. For patentees that previously filed a request for reconsideration of PTA under 37 C.F.R. § 1.705(d) and received a decision based on the prior methods for calculating PTA, a request for reconsideration of that decision may be filed within two months of the date of the decision. If the basis of requesting reconsideration is solely based on the newly implemented means for calculating PTA, the request need only state that reconsideration is requested in view of the Federal Circuit 9s decision. The Request for Recalculation should be kept in mind for recent patentees. The Request is a single-page form that requires no fee by the USPTO and the difference in PTA may be significant. If you have any questions or would like more information on any of issues discussed in this LawFlash, please contact any of the following Morgan Lewis attorneys: Washington, D.C. Robert (Bob) Smyth 202.739.5139 rsmyth@morganlewis.com Philadelphia Louis W. Beardell 215.963.5067 lbeardell@morganlewis.com 2 San Francisco Robin M. Silva 415.442.1379 rsilva@morganlewis.com About Morgan Lewis 9s Intellectual Property Practice Morgan Lewis 9s Intellectual Property Practice consists of more than 150 intellectual property professionals. We represent and advise clients concerning all aspects of intellectual property: patents, trademarks, and copyrights; intellectual property litigation; intellectual property licensing; intellectual property enforcement programs; trade secret protection; related matters involving franchises, the Internet, advertising, and unfair competition; outsourcing and managed services; and the full range of intellectual property issues that arise in business transactions. About Morgan, Lewis & Bockius LLP With 22 offices in the United States, Europe, and Asia, Morgan Lewis provides comprehensive transactional, litigation, labor and employment, and intellectual property legal services to clients of all sizes 4from global Fortune 100 companies to just-conceived startups 4across all major industries. Our international team of attorneys, patent agents, employee benefits advisors, regulatory scientists, and other specialists 4more than 3,000 professionals total 4serves clients from locations in Beijing, Boston, Brussels, Chicago, Dallas, Frankfurt, Harrisburg, Houston, Irvine, London, Los Angeles, Miami, Minneapolis, New York, Palo Alto, Paris, Philadelphia, Pittsburgh, Princeton, San Francisco, Tokyo, and Washington, D.C. For more information about Morgan Lewis or its practices, please visit us online at www.morganlewis.com . This LawFlash is provided as a general informational service to clients and friends of Morgan, Lewis & Bockius LLP. It should n ot be construed as, and does not constitute, legal advice on any specific matter, nor does this message create an attorney-client relationship. These materials may be considered Attorney Advertising in some states. Please note that the prior results discussed in the material do not guarantee similar outcomes. © 2010 Morgan, Lewis & Bockius LLP . All Rights Reserved.

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