Pfizer, Inc. et al. v. Michelle K. Lee (USPTO)


Docket Nos. 2015-1265

NEWMAN(D), DYK, O’MALLEY
January 22, 2016

Brief Summary: PTO calculation of PTA to include only time between initial action deadline and first erroneous restriction requirement and not the corrected RR found to be correct.

Summary: Pfizer appealed DC decision that the PTO properly calculated the length of the patent term adjustment (“PTA”) under § 154(b) for US 8,153,768. The PTA is determined by adding the A- (delays arising from the USPTO’s failure to act by certain examination deadlines), B- (for application pendency exceeding three years) and C- (delays due to interferences, secrecy orders, and appeals) delays, subtracting any overlapping days, and then subtracting any days attributable to applicant delay. The “A Delay” was at issue in this appeal. The Examiner issued a first restriction requirement (“RR”) 404 days after the deadline to do so but acknowledged in a discussiong with the applicants that it was incomplete and issued a replacement RR 601 days after the deadline. Later in prosecution, the PTO delayed the mailing of an office action after a RCE was filed by 280 days. In the PTA calculation, the PTO included 684 days of A Delay including the initial 404 days and the subsequent 280 days but not the 197 days between the first and second RRs. The DC declined Pfizer’s request for restoration of patent term for the disputed 197 days. The FC panel first concluded Pfizer had not waived its argument that a defective RR does not meet the requirements of Section 132 (requiring the PTO to provide at least one notification within the specified times). Regarding the merits, the opinion explains that the first RR was sufficient since “it informed the applicant of ‘the broad statutory basis for [the rejection of] his claims’” (“it provided both the ‘broad statutory basis’ for the examiner’s rejection, namely, that ‘[r]estriction to one of the following inventions [was] required under 35 U.S.C. § 121,’ and was sufficiently informative to allow [Pfizer] to counter the grounds for rejection” (citing Chester, FC 1990 (“Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”)) Pfizer also argued that “because the initial restriction requirement omitted certain claims, there was no ‘clear line of demarcation’ between the various inventions, and there was thus no way in which the applicants could have taken advantage of Section 121’s immunity based on the examiner’s initial restriction requirement” but the FC panel disagreed. It also distinguished this situation from those in Janssen (DDC 2013) and In re: Patent No. 7,803,385 where, in each case, “the examiner sua sponte rescinded and replaced the issues restriction requirements without explanation and without prompting from the applicants” and the PTO awarded the requested PTA extensions as “the examiner’s actions…were outside the normal ‘give and take’ process of patent prosecution”. Thus, the FC panel determined the PTO properly calculated the PTA. Judge Newman’s dissent argued this decision was incorrect because the initial RR was erroneous and the resultant delay should not be attributed to the applicant (“The panel majority holds that PTO error does not count if the applicant could have figured out what the examiner might have done if he had not erred.”)

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