11Oct 2022

{4 minutes to read}  In a recent case, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that limits the availability of PTA for time spent appealing an Examiner’s rejections only. 

The portion of the PTA statute at issue says:

[I]  the issue of an original patent is delayed due to . . .

(iii) Appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision under review reversing an adverse determination of patentability, the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

PTA for this type of delay is referred to as “Type C” PTA.

The Courts analyzed two issued patents. The District Court held that the “…unambiguous language imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issues as a patent as a result of that reversal.” Applying this interpretation to the prosecution history of the patents at issue, the district court held that no Type C PTA was due.

The Federal Circuit generally agreed with the District Court’s interpretation of the PTA statute as being in accordance with its “unambiguous language.” Thus, the Federal Circuit only reviewed the record to assess whether the “two requirements” for Type C delay were met:

1. Was an adverse determination of patentability reversed?

2. Did the application issue a patent as a result of that reversal?

Concerning the first patent, the court acknowledged that the Board held one of the claims unpatentable, but for reasons different than those discussed by the examiner during prosecution. According to the Federal Circuit, what matters for Type C PTA is that “[t]he adverse determination of unpatentability remained before and after the appeal.”

The Federal Circuit also agreed with the District Court’s second reason for denying PTA — The statutory requirement was not met because the claim that was ultimately issued differed substantively from the claim under review.

Turning to the second patent, the Federal Circuit again rejected the plaintiff’s arguments and reiterated that the PTA statute requires reversal of “an adverse determination of patentability,” not just a reversal of individual rejection(s). Even though the District Court reversed the anticipation rejection of claim 1, the claim remained unpatentable after the appeal because of the pending obviousness-type double patenting rejection. Thus, the first prong of the Type C PTA test was not met.

The Federal Circuit also found the second patent to fail the second prong of the Type C PTA test, because “[t]he patent, as issued, did not include the claim as appealed.” Rather, as noted above, the plaintiff canceled the claim and obtained claims based on a different claim set.

According to this decision, for a Type C PTA to be available, it is not sufficient to obtain reversal of specific rejections; a claim that was unpatentable before the appeal must be patentable after the appeal, and the claim that ultimately grants must not differ substantively from the claim on appeal. This suggests that applicants should consider structuring their appeals such that reversal of the appealed rejections will result in the allowability of at least some claims.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Please contact me at silvia@salvadorilaw.com with questions or comments.