When is sixty days from now? – Cheap and expensive strategies when being late

In Insights, Uncategorized

16 September, 2008

Ever been late? Then you know that there are two basic types of strategies for handling the situation: I Was Not Late and It Was Not My Fault. These two strategies are well illustrated in some recent cases concerning applications for patent term extension before the US Patent and Trademark Office, one of them involving AstraZeneca.

I Was Not Late
Calculating deadlines is not always straightforward. One problem is when to start counting, i.e. what day is day no. 1? In patent law, it is common practice that a term in days shall start counting on the following day. This is also how AstraZeneca, and many others at that time, interpreted the deadline of within sixty days from the date of governmental approval when they filed their applications for patent term extension concerning Prilosec OTC (US patent 5,817,338) and Symbicort (US patent 5,674,860) on the very last day.

The US Patent and Trademark Office denied these applications, one of the reasons being that the applications were filed one day late. The Office explains that this specific statute (35 USC §156) requires that the application is submitted “within the sixty-day period beginning on the date the product received [the relevant approval]”. Applying the I Was Not Late strategy, AstraZeneca have challenged these decisions. They argue that the US Patent and Trademark Office has suddenly and retroactively changed their practice of calculating the deadline, and thereby deemed timely filed applications as being late.

It Was Not My Fault (also known as The Dog Ate My Homework)
So, what if you realise that you are already late? The standard remedy in patent law is to pay a fee, and sometimes explain the unintentional delay. The fee is typically considerable, but not unreasonable (currently in the range of €210-550 at the European Patent Office). The Medicines Company filed their application for patent term extension concerning Angiomax (US patent 5,196,404) 61 days after the date of governmental approval (which in view of the AstraZeneca cases may be regarded as day 62).

The application was dismissed by the US Patent and Trademark Office as being late filed, but the Medicines Company have certainly explored their options for changing this outcome and protect their yearly sales of above $300 million for Angiomax. After intensive lobbying by The Medicines Company, the House of Representatives has recently passed an act with the suggestive name “Responsive Government Act of 2008” (H.R. 6344), also known as “Dog Ate My Homework Act”. If passed by the Senate and signed into law by the President, this act retroactively allows late filing of an application for patent term extension for three days against a fee, provided that the delay can be explained as unintentional.

And the fee? $65 million. Being late can be costly too!

Mikael Henriksson, European Patent Attorney

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