EDVA District Court Upholds PTO Penalty for Applicant Delay

October 21, 2013, 11:53 PM

In the Eastern District of Virginia, an Alexandria district court was asked to determine whether the United States Patent and Trademark Office (PTO) improperly calculated the patent term adjustment for a particular patent. The law governing the content and term of a patent is outlined in 35 U.S.C. 154. Under 154 a patent grant is issued for twenty years measured from the earliest filing date of the application. Id. However, because delays from an applicants submission to the issuance of a patent are often caused by the PTO and are generally out of the applicants control, Congress created provisions under which a patent owner can seek a patent term adjustment (PTA) for certain delays. PTAs can be sought where the PTO fails to provide a notice of allowance within fourteen months of an application filing, the PTO fails to issue a patent after three years have passed between the application and the allowance dates, or for other types of delays. 35 U.S.C. 154(b)(1). Further, an applicants own conduct can impact the calculation of a PTA where an applicant fails to engage reasonable efforts to conclude the prosecution of an application. Id. at 154(b)(2)(C)(i).

The plaintiff in this case, Gilead, applied for and was granted a PTA. However, the PTO subtracted 57 days from this adjustment due to the fact the applicant filed a supplemental information disclosure statement (IDS) after submitting a reply to a restriction requirement. The PTO held such supplemental submission constituted applicant delay under 154(b)(2)(C). After a review of the applicable statutes and regulations, the Alexandria district court concluded that the PTOs 57 day adjustment for applicant delay was proper. Congress clearly intended for the USPTO to use its expertise and experience in dictating what circumstances demonstrate a lack of reasonable effort on the part of an applicant. The explicit focus of the statute therefore is on whether an applicants efforts were reasonable, not whether the outcome of those efforts caused actual delay. Gilead Scis., Inc. v. Rea, 2013 U.S. Dist. LEXIS 144214, *10 (E.D. Va. Oct. 3, 2013) (J. OGrady). The district court went on to explain that while an applicant will not always be penalized for the filing of a supplemental IDS, when an applicant sits on material information in its possession, after replying to a restriction requirement, with no good excuse for having done so, it has failed to engage in reasonable efforts to conclude the processing or examination of an application. Id. at *13.

Thus, the PTO will be afforded wide deference in determining whether an applicants actions interfered with an examiners ability to conclude the prosecution of the application and whether such conduct warrants a reduction in the PTA sought. --Lauren Tallent Rogers