The Patent Term Guarantee Act (“the Act”), 35 U.S.C. § 154(b), provides for the restoration of patent term in three circumstances: (i) an “A-Delay,” which awards PTA for delays arising from the USPTO’s failure to act by certain examination deadlines; (ii) a “B-Delay,” which awards PTA for an application pendency exceeding three years; and (iii) a “C-Delay,” which awards PTA for delays due to interferences, secrecy orders, and appeals. The USPTO calculates PTA by adding the A-, B-, and C-Delays, subtracting any overlapping days, and then subtracting any days attributable to applicant delay.
At issue in this case is the statutory interpretation of an “A-Delay.” Specifically, an A-Delay is caused if a notification under section 132 or a notice of allowance is not issued within 14 months after a patent application is filed. Under section 132 there are different types of notifications that can be issued that speak to the merits of patentability of the claims. These types of notifications include restriction requirements, office actions, and other types of communications.
During prosecution of US 8,153,768, 404 days after the 14 month deadline the PTO mailed a restriction requirement. A restriction requirement informs an inventor that there the claims are directed towards multiple and distinct inventors, and the inventor is required to elect one of the inventions. In this case, in the restriction requirement the Examiner at the USPTO omitted the categorization of the various claims in the application. The Examiner acknowledged the restriction requirement was not complete, withdrew the restriction requirement, and issued a corrected restriction requirement 601 days after the deadline. At issue on this case, is whether the extension of time should be 404 days or 601 days.
Specifically, Pfizer challenges that the PTO’s original restriction requirement failed to satisfy the notice requirement of section 132 because the initial restriction requirement was incomplete.
The Federal Circuit states that under the statute’s plain meaning, the initial restriction requirement satisfied the statutory notice requirement because it information the applicant of “the broad statutory basis for the rejection of his claims.” The Federal Circuit stated that although the examiner did not classify the omitted six dependent claims into one of the 21 defined invention groups, the examiner made clear on the face of the initial restriction requirement that he intended to account for all pending claims. More so, the Federal Circuit clarified the underlying “purpose of PTA is to ‘compensate patent applicants for certain reductions in patent term that are not the fault of the applicant,’ not to guarantee the correctness of the agency’s every decision.”
Thus, the Federal Circuit stated that the PTA should be 404 and not 601 days.
HOUSTON PATENT ATTORNEY TAKE-A-WAYS:
- It appears that dealing with PTA and section 132, the United States Patent and Trademark Office will take a hardline/literal interpretation of the statute. This makes sense, seeing how the PTO does not want to make sure that each and every notification issued by an examiner is 100% factual, as mistakes are bound to happen.
- In this case, the applicant did extend the response time for the restriction requirement the full allotted six months. If you can see timing being incredibly important for you (and you are later going to argue PTA), it makes sense to not wait the full six months for the patent applications.