None Of Us Saw Them Stop The PTA Giveaway

• Published date: 20 September 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Daniele M. San Rom'n, Jill K. MacAlpine, Sasha Hoyt (Summer Associate), Stacy Lewis and Thomas L. Irving

Decision

Sawstop Holding LLC v. Hirshfeld, No. 1:20-cv-1212(LMB/LSN), 2021 WL 2021122 (E.D. Va. May 20, 2021) ("Sawstop II").

Holding

The District Court for the Eastern District of Virginia granted Acting PTO Director Hirshfeld's motion for summary judgment. The PTO correctly determined that ' 154(b)(1)(C)(iii) does not apply "when a patent issues after a district court 'reversed a rejection of a pending claim, but does not explicitly address a provisional rejection of the same claim.'" Sawstop II, 2021 WL 2021122, at *5.

Background

The term of a patent may be extended by Patent Term Adjustment (PTA) to account for delays in prosecution that were not caused by the applicant. Three categories of delay that lead to PTA are:

1. A delay: failure by the U.S. Patent and Trademark Office (PTO) to respond timely to certain filings;
2. B delay: failure by the PTO to issue a patent within 3 years of filing; and
3. C delay: delays due to derivation proceedings, secrecy orders and appeals. See 35 U.S.C. ' 154(b)(1).

With respect to C-Delay, "the term of the patent shall be extended 1 day for each day of the pendency of the review" by Patent Trial and Appeal Board (PTAB) or a Federal appeals court if "the patent was issued under a decision in the review reversing an adverse determination of patentability." Id. at ' 154(b)(1)(C)(iii).

According to the PTO, C delay arising from appellate review begins "on the date which jurisdiction over the application passes to the [PTAB or a Federal court]" and ends "on the date of a final decision in favor of the applicant by the [Board] or by a Federal Court." 37 C.F.R. ' 1.703(e). "A 'final decision in favor of applicant' is understood to include any final decision of the [PTAB] or Federal court that reverses all of the rejections of at least one claim (without subjecting the claim to a new rejection)." Changes to Implement Patent Term Adjustment Under Twenty Year Patent Term; Final Rule, 65 Fed. Reg. 56366-01, 56376 (Sept. 18, 2000).

The Federal Circuit has also forged boundaries for obtaining C delay. For instance, in Chudik v. Hirshfeld, 987 F.3d 1033 (Fed. Cir. 2021), the court held that C delay PTA excludes time spent pursuing a reversal of a rejection when, "because of an examiner reopening of prosecution [after applicant filed a Notice of Appeal in the PTAB], no such decision is ever issued." Id. at 1035.

But why does all this matter? Because the clock for patent term begins at the first non-provisional filing, the amount of time spent prosecuting a patent application'as well as appealing an adverse decision by the Examiner...