Recently, in Mayo Foundation for Medical Education and Research v. Iancu, the Federal Circuit agreed with the U.S. Patent and Trademark Office (USPTO) with regard to the Patent Term Adjustment (PTA) for U.S. Patent No. 8,981,063. The issue was whether the interpretation of “any time consumed by continued examination of the application requested by the applicant” was correct.
During the prosecution, the applicant filed a Request for Continued Examination (RCE) after which an interference was declared between the application and one patent. The Board ultimately awarded priority to Applicant and returned the application to the Examiner, who issued an Office Action rejecting the claims.
The Applicant responded and the examiner withdrew the rejection and mailed a Notice of Allowance.
On appeal for the request of PTA, the Applicant provided the following timeline for prosecution of the application:
The appeal concerned the third bracketed time period. After the patent had issued, the Applicant requested a redetermination of PTA, arguing that the Examiner sua sponte reopened prosecution after termination of the interference, and that the action of the Examiner did not constitute time consumed by the RCE that was requested by the Applicant (i.e., “RCE time”).
The USPTO disagreed, asserting that the RCE time did not end when the interference was declared, but rather ended when the Notice of Allowance was mailed.
Before the District Court, the Applicant argued that a declaration of an interference terminates RCE time for the purposes of calculating the delay entitled to Applicant for each day the application is pending beyond three years. According to the Applicant, the delay for a RCE ends once the claims are “deemed allowable,” and a declaration of interference is tantamount to a Notice of Allowance. Thus, according to the Applicant, the Examiner’s reopening of examination was time attributable to the PTO, not to the applicant.
The Federal Circuit disagreed and held that “where an RCE has previously been filed, the time between termination of an interference and the date of mailing of the Notice of Allowance is “time consumed by continued examination of the application requested by the applicant.”
Judge Newman dissented and stated that the post-interference examination was initiated by USPTO and should not be attributable to Applicant’s activities.
The question is: What will happen to the PTA if, after a successful appeal, the examiner sua sponte decides to reopen prosecution?
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Silvia Salvadori, PhD