Patent law allows for a compensating adjustment in the patent term for burdensome USPTO delays and applicant-caused delays in reviewing patent applications. InExelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia was asked if Requests for Continued Examination (RCEs) filed during the prosecution of a patent application creates an applicant-caused delay, subject to term penalties.
The court found that an RCE filed after the 3-year imposed deadline on USPTO should have no impact on patent term adjustment. It means USPTO had been miscalculating some patent terms. The impact of this can be staggering with some giant, income-producing patents, such as those found in pharma.
USPTO may appeal this, but valuators in due diligence solving for patent terms should search for whether any RCE was filed after three years of the application file date and if that filing negatively impacted a USPTO calculation (adjustment) of the legal life of the patent.