Posts Tagged: "jerome lemelson"

The Ghost of Lemelson: PTA Consequences of Exelixis v. Kappos

On November 1, 2012, a federal district court (EDVA) issued an order that may have profound consequences for calculations of patent term adjustment (“PTA”). The district court believed that the PTA promised by 35 USC § 154(b)(1)(B)(i), which relates to Requests for Continued Examination, only comes into play if a RCE is filed within the three-year period from the application’s filing date. Before discussing the court’s order, let me review the law and regulations about PTA—which can be complex. In 1994, Congress altered the calculation of U.S. patent terms. Previously, Congress set the patent term as 17 years from patent issuance. After the change, Congress set the patent term as generally 20 years from the filing of the patent application.

Kip Werking

November 26, 2012

Submarine Patents Alive and Well: Tivo Patents DVR Scheduling

Submarine patents are not ever likely going to be the problem that they once were prior to the publication of patent applications at 18 months and prior to the change in patent term. On June 8, 1995 the term for a US patent changed from 17 years from issuance to 20 years from filing. There is still an opportunity to obtain additional patent term, for example where the Patent Office interjects unnecessary delay into the process, but it is unrealistic to think that patents will remain pending unknown for decades, which was frequently possible and how Lemelson masterfully manipulated the system, within the rules of course. But the TiVo patent was pending for a decade, unknown and secret. That should not be able to happen and should justifiably cause an alarm.

Gene Quinn

February 19, 2010