Every patent practitioner knows that there are statutory periods to respond to USPTO Office Actions. Typically, they are six months. Miss those deadlines and you could be up a creek, needing to petition to revive your application, if you can.
However, the PTO generally reduces these to a "shortened statutory period" of three months (two, for certain actions). So if you're late, you simply pay an increasing fee for each month you are delayed, up to the statutory limit. And unless you: a) work only with clients/inventors who respond promptly to your emails (and pay their bills on time); b) don't ever work on litigation matters; c) never take a vacation; and/or d) have been lucky enough to never be jammed with a crisis of someone else's (or even your own) making; then you have almost certainly availed yourself of this "convenient" option provided by the PTO. (In fact, certain litigious patentees in pre-GATT days were known to always use the maximum allowed extensions, to keep an application pending as long as possible.) That first extension month is yours for the low, low price of $150 – and if you are a small entity, it's $75. What a bargain! See 37 CFR 1.17(a).
But there is a bigger price, of course: patent term. Most of us (?) appreciate that these delays can negate extra patent term that would otherwise have been granted under Patent Term Adjustment for PTO delays. Fewer, however, seem to take into consideration the more obvious problem that a delayed response also delays the issuance of the patent. Every day you wait to file that response is, in theory, a day the Examiner is not acting on it, and one more day until that Notice of Allowance arrives.
Combining these costs can yield disastrous results. Enter today's patent, stage right:
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U.S. Patent No. 8,110,187 Purification and characterization of cytotoxic lymphocyte maturation factor and monoclonal antibodies thereto Assignee: Hoffman-LaRoche, Inc. Issued: February 7, 2012 USPTO Delay: 1,057 days |
Commentary: First things first: this patent is DOA. Like the Army patents discussed here a while back, Roche's patent expired a few months ago. Twenty years from the priority date (12/22/1989) plus 665 days PTA = October 18, 2011. Oops. The difference in this case, however, is that the Applicant's delay was solely responsible for the stillbirth. Here's how:
Pretend that Roche had filed all its responses without extension, but that the PTO still had its delays (and that the Examiner's docket was uniformly distributed during that time). Then the patent probably would have issued about 392 days sooner, or January 11, 2011. That is still more than twenty years from the priority date, but there would have been 1,057 days of PTA extension, resulting in an expiration date of November 13, 2012 (normal expiration of 12/22/2009 + 1,057 days). Total patent term would have thus been 672 days (11/13/2012 minus 1/11/2011). Coulda, woulda, shoulda.
So, instead of having two years of an enforceable patent, Hoffman-LaRoche has nothing but the receipts it spent on prosecution. And those receipts probably aren't small – there were three appeal notices, two RCEs and one 453-page submission in an unsuccessful attempt to provoke an interference. Add to this that three different law firms were involved (it was originally filed by the erstwhile Pennie & Edmonds firm, passing briefly through Jones Day, to its current location), along with the clarifications in PTA calculations following the Wyeth v. Kappos case, and perhaps there is some understanding as to how the expiration date issue might have gone undetected.
But all the Applicant delay here occurred by April 2009. At that point, with the terminal date in sight, Roche pressed forward with an Office Action response and full appeal briefing to the BPAI. By the time the reply brief was filed in October 2010, it was a foregone conclusion that the patent could not issue with any term. (Prior to the appeal, Roche could have received a maximum of 226 days extension, to August 5, 2010. Roche gained an additional 439 days for its appeal pendency, and only then because the appeal eventually succeeded in reversing the rejections.)
Bottom line: 392 days of delay results in the loss of 672 days of term for Roche. Valium, anyone?
There are certainly times when extensions are necessary, and even useful. But we need to be mindful of their consequences with respect to term, especially in fields where a single day of a patent's life could have significant value.
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