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Mayo Foundation for Medical Education and Research v. Iancu

End of Interference Does Not Necessarily Terminate RCE Time for Patent Term Adjustment Purposes

Mayo Foundation for Medical Education and Research v. Iancu, __ F.3d __, 2019 WL ____ (Fed. Cir. Sept. 16, 2019) (Newman (dissenting), LOURIE, Dyk) (E.D. Va.: Ellis) (3 of 5 stars)

Fed Cir affirms summary judgment approving PTO’s computation of Patent Term Adjustment (“PTA”) under § 154(b)(1)(B). The dispute was whether the PTO committed an error of statutory interpretation in its determination that the period extending from the expiration of an interference during prosecution of Mayo’s application (after which the examiner reopened prosecution), and ending with the notice of allowance, was “RCE time” (i.e., the time consumed by an applicant’s request for continued application per § 154(b)(1)(B)(i)). Applying this determination, the PTO held that notwithstanding the application’s lengthy prosecution (just under six years), there was no “B Delay” (i.e., delay entitling the applicant to PTA for pendency beyond three years). Reviewing the PTO’s regulations and Novartis, 740 F.3d 593 (Fed. Cir. 2014), the opinion rejects Mayo’s contention that the declaration of an interference should have been treated as “tantamount to a Notice of Allowance” sufficient to terminate RCE time (and restore Mayo’s entitlement to “B Delay”). That the resumption of prosecution post-interference was not something Mayo “requested” did not require a different outcome. “[E]xamination clearly did not end until the date the Notice of Allowance was mailed.” Op. at 11.

Dissent: In Judge Newman’s view, the post-interference examination period “plainly is examination delay due to PTO procedures.” Dissent at 2. She would thus have held that period eligible for PTA.

KEYWORDS: PATENT TERM ADJUSTMENT; RCE TIME; B DELAY; ADMINISTRATIVE PROCEDURE ACT