CAFC Constructs Patent Term Extension Provision of 1999 AIPA to Benefit Inventors

The Court of Appeals for the Federal Circuit (“CAFC”) has interpreted the 1999 American Inventors Protection Act (“AIPA”) to benefit inventors in contrast to the position asserted by the US Patent and Trademark Office (“USPTO”).  Wyethet al. v. David J. Kappos et al., 2009-1120 (CAFC, January 7, 2010).

In 1999, the American Inventors Protection Act amended 35 U.S.C. § 154(b) to address the problem of reduced patent terms caused by delays be the USPTO.  Prior to the passage of the AIPA, the patent term in the US was 17 years from the date of issue of the patent.  The AIPA provides a patent term of 20 years from the date of filing of the application. 

The AIPA, 35 U.S.C. § 154(b)(1) provides:

(A) Guarantee of prompt Patent and Trademark Office responses.--Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to [meet deadlines specified in clauses (i)-(iv)] . . .

the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

(B) Guarantee of no more than 3-year application pendency.--Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States . . .

the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

(C) Guarantee or adjustments for delays due to interferences, secrecy orders, and appeals.--Subject to the limitations under paragraph (2) . . .

the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

Paragraphs (A) and (B) are at issue.  Paragraph (A) is referred to as the A delay and paragraph (B) is referred to as the B delay.  The USPTO interpreted the B delay to start at the time of filing the patent application, not three years later.  The resulting USPTO calculation was the greater or the A delay and the B delay, less delays by the applicant.   

The District Court for the District of Columbia found that “The problem with the PTO’s interpretation is that it considers the application delayed under [the B guarantee] during the period before it has been delayed.” Wyeth v. Dudas 580 F. Supp. 2d 138, 141 (D.D.C. 2008) (citing Merck & Co. v Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)).

The CAFC agreed with the District Court and constructed the statute to require the adding the A delay plus the B delay less delays by the application.  Although this may sometimes result in patent terms that are greater than 17 years, such a patent term is supported in the legislation.  Specifically, the statute provides that the statute “includes a new provision guaranteeing diligent applicants at least a 17-year term…”  H.R. Rep. No. 106-464, at 125 (1994) (emphasis added).  The USPTO’s interpretation effectively created a 17-year term cap where B delays are greater than A delays.