AmiCOUR IP Group News and Opinions

Elelixis v. Kappos:
Guarantee My
 Patent Term

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May 30, 2012  - In addition to a claim filed in Eastern Virginia District court asking the Commissioner of Patents to extend the term of a patent owner's grant by 152 days, plaintiff Elelixis has also asked the Court to find that "37 C.F.R. § 1.703(b)(1) is invalid, unconstitutional, and contrary to law."  The cited statute states, "(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;"   The Elelixis complaint deals with overlapping delays, where adjustment of both delays might double count the actual time consumed by the USPTO under a set of allowable and adjustable prosecution delays.

The Patent Term Guarantee Act of 1999 addressed  inventor's complaints that patent prosecution delays between the filing date and issue date could exceed three years. The cumulative administrative delays could result in less than 17 years of enforceable statutory life and protection, and thus the 1999 law was indended to provide full statutory life to successful inventors. The earlier change from 17 year post-grant statutory life to 20 years post-filing life of a patent grant came about after complaints surfaced over Lemelson's famous "submarine" patents - applications allegedly left pending while claim modifications targeted evolving technologies.

In one sense, the new Elelixis case is low profile - just another IP owner in pursuit of every day of patent protection afforded by law - and in another sense, the case may lead to changes in patent law that may affect every IP asset owner.