The Fed. Circuit’s decision is unfavorable, the Supreme court should takes steps to fix it.

The Federal Circuit’s decision to expand the scope of a judge-created rule for invalidating certain patents may impact nearly half of US patents and is likely to cost US biopharma and technology innovators billions of dollars. For these reasons and others, the US Supreme Court should take up and reverse In re Cellect, preserving statutory guarantees.

In re Cellect diminishes the intent of Congress and undercuts its decision to fundamentally alter the US patent system in 1994 to align it with the rest of the world. Congress changed the starting point of a patent’s term to 20 years from when an inventor filed a patent application, rather than 17 years from the time the patent was granted.

This altered the impact of US Patent and Trademark Office delays in examining patents. Under the old system, delays had no impact on patent term because it was measured from patent issuance. But starting the clock on the date of filing a patent application meant delays began consuming the effective term of the patent, resulting in a diminished value and creating a need to restore lost patent term.

The Federal Circuit’s decision hurts big companies, and it hurts universities and small companies that rely on predictable licensing revenue or on being acquired based on their ability to adequately protect their inventions for a sufficient amount of time. It puts innovators to the herculean and uncertain task of reviewing their patents that have term adjustments and analyzing whether to disclaim the adjustments entirely to save their patents from invalidation.

Given the upheaval caused by the Federal Circuit’s decision, the Supreme Court should take up invalidation of US patents solely based on patent term adjustment. In re Cellect provides the opportunity to do so now.