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In a recent case, Mohsenzadeh v. Lee, the federal circuit affirmed the district court’s decision that the United States Patent and Trademark Office’s (USPTO) delay in issuing a restriction requirement in an application (“the parent application”) does not earn patent term adjustment for the related divisional applications. The USPTO issued a restriction requirement 14 months after the parent application was filed, and the application earned those 1,476 days in patent term adjustment. However, its divisional application did not.

Because of the restriction requirement, the plaintiff filed two divisional applications which were allegedly entitled to the same patent term adjustment of their parent application since they were filed “late” due to the lateness of the USPTO in issuing the restriction requirement. However, the divisional applications were not given any patent term adjustment, and as a result, the parent case expired much later than the children applications.

The district court granted summary judgment to the USPTO on the basis of the language in the statute, which only grants patent term adjustment for delays that occurred during prosecution of the application from which the patent issued. Accordingly, the two divisional applications were not entitled to the patent term adjustment because the delays did not occur during their prosecution. The federal court affirmed on the basis of the language of the patent term statute and concluded: “Congress intended delay in the prosecution of an application to be restored to a single patent, the patent issuing directly from that application. In other words, the term of any patent arising from a continuing application is not restored for delay in the prosecution of the parent patent’s application.”

My professional opinion is that this holding is unfair to the applicant. The restriction requirement was issued after 14 months from filing, so obviously the two divisional applications also were filed much later than they should have been. The result is that they are entitled to a very short life since they claim the same priority as the parent case.

The applicant should very carefully consider which is the most important subject matter to elect to prosecute following a restriction requirement. As of now, only the parent applications will be entitled to a patent term adjustment, if any at all. As such, the divisional applications will not.

Contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD.
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(212) 897-1938