The recent decision by the Federal Circuit’s to amplify the reach of a judicially created rule, which invalidates certain patents, could have an impact on approximately half of all US patents. This change stands to reduce the value of US biopharma and technology innovations by billions of dollars. It is for this reason, among others, that the US Supreme Court should consider and overturn the ruling for the case of In re Cellect, in support of statutory guarantees.
The judgement in the In re Cellect case challenges the intent of Congress by undermining its crucial decision to re-align the US patent system with the international model in 1994. This involved adjusting the beginning of a patent’s term to start 20 years from when an inventor applies for a patent, instead of 17 years from the time the patent was awarded.
The 1999 Patent Term Guarantee Act, a section of the American Inventors Protection Act, presented a promise to inventors that a full patent term adjustment would be granted for any examination delay caused by the USPTO. With these incentives, the term of a patent would be extended one day for each day of delay by the USPTO. As per data covering 2005 to 2022, the USPTO adjusts the terms of roughly half the patents it issues due to frequent delays.
In contrast, the ruling in the In re Cellect case seemingly reverses Congress’s statutory guarantee. The issue pertains to patents in the same family, which despite receiving term adjustments, would still supposedly have the same expiry date had it not been for delays by the USPTO in processing some of the patents.
Despite Cellect LLC’s appeal to the Federal Circuit to reverse the decision made by the Patent Trial and Appeal Board to invalidate four imaging tech patents on the grounds of “obviousness-type double patenting”, the Federal Circuit upheld the Board’s decision. This decision cited the statute that patent term adjustment is not a guaranteed right and that it cannot be used to compensate patent applicants that have voluntarily shortened the term of their patents to escape OTDP or for any other purposes.
It is apparent that the recent ruling by the Federal Circuit could create grave concerns for all types of companies, including major corporations and smaller companies who rely on assured licensing revenue or potential acquisitions based on their ability to sufficiently protect their inventions for an adequate length of time.
Considering the consequential upheaval caused by the Federal Circuit’s decision, it is critical that the Supreme Court deliberate on the invalidation of US patents based solely on patent term adjustment. The case In re Cellect LLC presents an immediate opportunity to do this.