Patent Term Extension, Dog ate my Homework Act
This post was first published on 12th April, 2011.
Guest Post by Ms. Vinita Radhakrishnan
In future, ‘Dog ate my homework’ may be a perfectly accepted excuse for missing a deadline at United States Patent and Trademark Office (USPTO) for Patent term extension (PTE) request. Recently, I stumbled upon an article authored by Dianna Goldenson titled “A day late and a few million dollars short”. The article mainly refers to the deadline calculation for the Patent term extension request to be placed before the USPTO.
A bill pending before the Congress (HR 5120, 109th Cong.) which is pet-named by it’s critics as “Dog ate my Homework act” could have been a perfect gift for The Medicines Company (MDCO) if it was passed by the congress before Mar 2010. This act as drafted would enable the applicant who misses the deadline for PTE request to get a 3-day grace period at the discretion of the USPTO director for unintentional delay. Needless to say, this grace would come for a cost.
In case of Pharmaceutical patents, obtaining approval from the regulatory authorities can take several years which literally eats into the patent term thus leaving less than 10 years of actual life for a pharmaceutical patent. To compensate for the shortening of term, the USPTO provides patent extension of a few years to applicants who have lost substantial time of the patent term due to delay in the FDA approval procedure. The catch here is that the request for Patent term extension shall be made within 60 days of receiving the FDA approval. However, many applicants miscalculate this 60-day period by not counting the date of approval. Hence it needs to be noted that the 60-day time period starts from the date of approval. So, if the approval is dated today i.e. 12th April, the deadline for the same will be 10th June. Due to miscalculation of the date by the lawyers, MDCOs patent for the drug Angiomax expired in March 2010 which could have been extended to 2014 if the PTE request was filed a day prior.
My question to the readers of the blog is would such a grace period be fair???