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Federal Circuit

Patent Term Adjustment Obtained for PTO Delay During a Parent Application Does Not Also Apply to Subsequent Divisional or Continuation Applications

June 29, 2015

Federal Circuit

Patent Term Adjustment Obtained for PTO Delay During a Parent Application Does Not Also Apply to Subsequent Divisional or Continuation Applications

June 29, 2015

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Mohsenzadeh v. Lee, __ F.3d __ (Fed. Cir. June 25, 2015) (Moore, Schall, REYNA) (E.D. Va.: Lee) (2 of 5 stars)

Federal Circuit affirms judgment upholding the PTO’s patent term adjustment calculation.  The patentee had filed its original application in 2002, yet the PTO did not take any action until 2006, when it issued a restriction requirement.  The applicant elected a claim set and obtained a patent, for which it received 1,476 days of additional patent term under 35 U.S.C. § 154(b)(1)(A), due to the PTO’s tardiness in issuing the restriction.  The patentee had also filed a divisional application to pursue the other claims, and, although this became an issued patent, the PTO did not grant any term adjustment for the divisional, applying 37 C.F.R. § 1.704(c)(14).

The PTO’s decision was correct.  The plain language of section 154(b)(1)(A) showed that Congress intended patent term for PTO delay during prosecution to be restored only to the patent issuing directly from the application in which the delay occurs.  The statute says that “if the issue of an original patent is delayed” due to the PTO’s failure to provide a first action within 14 months after the filing of “an application” under section 111(a) or the commencement of national stage proceedings in “an international application,” then “the term of the patent shall be extended 1 day for each day of delay.”  This language made no mention of carrying term adjusts into continuations or divisionals, even though Congress expressly addressed continuations in other parts of section 154.  “Congress’ intent that the statute clearly address both parent and continuing applications, where necessary, suggests that Congress did not provide patent term adjustments in continuing applications based on delays in the prosecution of parent applications in § 154(b)(1)(A).”  Slip op. at 9.  Moreover, the statutory subsection allowing term adjustments for international applications was added a couple years after the other parts of the adjustment statute.  That Congress believed this addition necessary suggested that the rest of the statute does not already permit term adjustments in a continuing application based on delays in the parent.

Because the statute’s plain language resolved the issue, the court did not consider the PTO’s alternative argument that its regulation was a proper exercise of its delegating rule-making authority under 35 U.S.C. § 154(b)(2)(C)(iii).

Related Tags

CAFC Summary
Federal Circuit
Patent Term Adjustment

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Craig Countryman | Principal

Craig Countryman is a Principal in the Southern California office of Fish & Richardson and was named a 2016 Rising Star by Law360, and was named to the "Top 40 Under 40" lists in both the Daily Journal and the San Diego Daily Transcript.  His practice...

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