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The Federal Circuit affirmed the court’s holding that the PTO’s decision to reduce the Patent Term Adjustment (“PTA”) amount of time by 57 days under 35 U.S.C. § 154(b)(2)(C) due to the patent applicant’s filing of a supplemental Information Disclosure Statement following its initial reply to the examiner’s restriction requirement.  According to the PTO, the filing of a supplemental IDS after filing a response to the restriction requirement constituted a failure to engage in a reasonable effort to conclude prosecution as required by 37 C.F.R. § 1.704(c)(8).  Gilead argued on appeal that the statute, when read in context, requires applicant behavior that resulted in actual delay, but the timing of its supplemental IDS did not cause any actual delay.  The court, however, held that the reasonable interpretation of the statute is that Congress intended to sanction not only applicant conduct or behavior that result in actual delay, but also those having the potential to result in delay irrespective of whether such delay actually occurred. 

Gilead Sciences, Inc. v. Lee, Case No. 2014-1159 (February 26, 2015); Opinion by: Wallach, joined by Dyk and Hughes; Appealed From: District Court for the Eastern District of Virginia, O’Grady, J. Read the full opinion here.

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