Wyeth v. Kappos: The United States Patent Office Is Forced to Change Course

Engage, Volume 11, Issue 2
By John C. Freeman
August 31, 2010
The United States Patent Office (“USPTO”) was established in 1790 with the mission to determine whether an invention merited a patent. Such a patent conveys a monopoly to the owner of the patent that allows the owner to prevent others from making, using, offering to sell, or selling the invention in the United States. According to the U.S. Constitution, the monopoly has a finite period for enforcement. In 1994, Congress decided to change the way the term was calculated from being measured from the date of grant of a patent to being measured from the date of filing of a patent application. Later, Congress recognized that laws were needed to address delays during examination of a patent application which could lead to the shortening of the term of the patent. As with most patent laws, the USPTO presented rules to address the laws regarding delays during examination. While most of the rules regarding delays were straightforward, there were several instances where the USPTO did not address the statutory changes through its rules. One such instance  was exposed by the Court of Appeals for the Federal Circuit (CAFC), which held in the case Wyeth v. Kappos that the USPTO implemented rules regarding delay that were contrary to the intent of Congress’ laws...