Inventors Take Heart: Federal Court Restores Patent Term Guarantees, at Last Protecting Innovators from Patent Office Delays, Noted Professor Says

WASHINGTON--(EON: Enhanced Online News)--Last week’s landmark federal court decision is good news for inventors and will affect tens of thousands of pending patent applications, a leading patent law professor said today.

“In 2004, however, the Patent Office revised its rules, withholding compensation for some examination delays”

The Wyeth v. Kappos decision handed down on January 7^th by the United States Court of Appeals for the Federal Circuit, as analyzed by Professor Irving Kayton, “at last clarifies and restores the full patent term guarantees provided under the American Inventors Protection Act.” Dr. Kayton is Professor of Law Emeritus of George Mason University, and a founder of PatentTerm Online, LLC, which assists patent professionals in auditing patent terms.

Prof. Kayton noted that, for over a century, inventors received a fixed 17-year term to exclude others from practicing a patented invention. This changed in 1995, when the law was modified to provide a term ending 20 years from a patent application’s filing date. As a result, each patent had a unique term depending on how long it took for the application to be examined in the Patent Office.

“This system, however, created a serious inequity that very much needed to be addressed,” Prof. Kayton pointed out. “For every day the Patent Office delayed in examining a patent,” he stated, “an inventor potentially lost a commensurate day of patent coverage. For example, if the Patent Office took eight years to issue a patent, an inventor could, through no fault of his or her own, receive just 12 years of patent term. That’s five years less than the inventor would have received under the prior 17-year system!”

To restore fairness and proper incentives to inventors, the American Inventors Protection Act (AIPA) was enacted in 1999 to compensate for Patent Office examination delays. AIPA guaranteed that diligent applicants would always receive a term of no less than 17 years, sometimes considerably more, up to 20 years.

“In 2004, however, the Patent Office revised its rules, withholding compensation for some examination delays,” said Prof. Kayton. “To support its position, the Patent Office adopted a strained interpretation of the AIPA statute, eliminating some examination delays as overlapping, even if occurring on different days.”

In Wyeth v. Kappos, the Federal Appellate Court reversed the Patent Office, holding that examination delays only overlap if occurring on the same day. Now, inventors will receive full offsetting credit for many delays that previously the Patent Office simply ignored. For many patents, hundreds of additional days of patent coverage will result.

Concluding his commentary, Prof. Kayton said: “Inventors and the organizations that practice their patents, or employ these innovators, can now move forward knowing they are operating on a level playing field – one on which both creators and the Patent Office have an incentive to address patentability more quickly and efficiently.”

About PatentTerm Online, LLC

PatentTerm Online, LLC is an online calculator to assist patent professionals in auditing patent terms under the American Inventors Protection Act. Our founders, Professor Irving Kayton and James Longfellow, are patent attorneys who have taught extensively on AIPA patent term, and have long advocated the holding in Wyeth v. Kappos. For more information, visit www.patentterm.com or contact us by phone at [phone].