Vedder Thinking | News Deborah Lu Quoted in Bloomberg BNA’s Life Sciences Law & Industry Report on Patent Term Extension
January 24, 2014
Deborah L. Lu, Ph.D., Shareholder and member of the firm's Intellectual Property practice group, was quoted in the recent Bloomberg BNA Life Sciences Law & Industry Report article "Extension of Patent Term Doesn’t Include Time Spent in Continued Exam, Court Rules."
On January 15, the U.S. Court of Appeals for the Federal Circuit ruled that the applicant is responsible for delays in patent allowance incurred by requests for continued examination (RCE) in Novartis AG v. Lee. Any patent term adjustment—an extension—wouldn’t include the time from the RCE to the date the Patent and Trademark Office allows the patented claims. However, the court said, any time between the allowance and the date the patent actually issues should be calculated as part of the PTA, contrary to the PTO's related rule, potentially increasing the amount of time that may be added to life sciences patents.
Dr. Lu commented via a January 16 e-mail to Bloomberg BNA, saying, "I think the decision is a win for life sciences law and the patent community, especially because filing an RCE expedites prosecution instead of a lengthier appeal process—even though both periods are subtracted from a patent term adjustment, but the appeal period may be added back if the appeal is favorable to the patent applicant. It seemed unfair to penalize a patent applicant for filing an RCE (which was usually preferable to a patent examiner) to expedite patent prosecution, rather than an appeal, which often results in a delay to obtain a patent with respect to patent term adjustment."
To read this Life Sciences Law & Industry Report in its entirety, please download the attachment below.