This appeal involves the amount of a patent term adjustment awarded to Pfizer. Pfizer filed the lawsuit seeking to reverse the PTO’s amount of the adjustment and to add back 197 days to the term. According to 35 U.S.C. §154(b)(i) regarding “A-Delays,” the patentee is entitled to additions to the patent term if the PTO fails to timely provide a notification under Section 132. Here, the PTO issued a first office action that included a restriction requirement. However, although the restriction requirement was intended to include all of the pending claims, the restriction requirement did not place six of the dependent claims into any of the restricted groups. The applicants called the examiner to inform him of this error and he later issued a corrected office action with a proper restriction requirement. In calculating the patent term adjustment, the PTO treated the original, erroneous office action as being properly issued and therefore excluded the 197 days it took the PTO to issue the corrected restriction requirement. The Federal Circuit affirmed the denial of the 197 days delay in issuing the corrected restriction requirement, because the office action satisfied the statutory notice requirement and it informed the applicant of the broad statutory basis for the claim rejections.
In her dissent, Judge Newman argued that the purpose of the patent term adjustment is to compensate the applicant for PTO-caused delays and it was the issuance of the erroneous office action by the PTO that caused the delay.
Pfizer, Inc. v. Michelle K. Lee., Case No. 2015-1265 (January 22, 2016); Opinion by: O’Malley, joined by Dyk, dissenting opinion by Newman; Appealed From: United States District Court for the Eastern District of Virginia, Lee, J. Read the full opinion here.
