Category Archives: Patent Term Extension

Incomplete response to Final Office Action results in reduced Patent Term Adjustment

Intra-Cellular Therapies, Inc. v. Andrei Iancu (USPTO) Docket No. 2018-1849 WALLACH, CHEN, HUGHES September 18, 2019 Brief Summary: DC decision affirming USPTO’s PTA calculation penalizing IC for 21-day delay in filing proper response to FOA affirmed. Summary: Intra-Cellular (IC) appealed … Continue reading

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“[P]ost-interference examination period” was RCE time “attributable to Mayo” that reduced time of patent term adjustment (PTA)

Mayo Foundation v. Andrei Iancu (USPTO) Docket No. 2018-2031 NEWMAN, LOURIE, DYK September 16, 2019 Brief Summary: DC determination that “post-interference examination period” was “was RCE time ‘attributable to Mayo, and not the PTO’” and reduced Mayo’s PTA time. Summary: … Continue reading

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Supernus Pharm., Inc. et al. v. Andrei Iancu (USPTO)

Docket No. 2017-1357 DYK, SCHALL, REYNA January 23, 2019 Brief summary: DC grant of SJ to the USPTO regarding calculation of the PTA for Supernus’s patent reversed and remanded since Supernus could not have engaged in “reasonable efforts” to disclose … Continue reading

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Actelion Pharmaceuticals, Ltd. v. Joseph Matal (USPTO)

Docket No. 2017-1238 LOURIE, O’MALLEY, WALLACH February 6, 2018 Brief summary: DC grant of SJ to the PTO that it correctly calculated the § 1.54 patent term adjustment “A delay” since Actelion did not expressly request to begin national examination … Continue reading

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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 … Continue reading

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Daiichi Sankyo Company Ltd., v. Michelle Lee (USPTO)

Docket No. 2014-1280 MOORE, REYNA, TARANTO July 2, 2015 Brief Summary: Daiichi’s requests and petitions regarding section 154 (prosecution-related) patent term adjustment (PTA) determinations for two patents denied because the same were filed outside of the two-month (request for reconsideration) … Continue reading

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Gilead Sciences, Inc. v. Michelle K. Lee, et al.

Docket No. 2014-1159 DYK, WALLACH, HUGHES February 26, 2015 Brief Summary: PTO decision to reduce PTA due to the filing of a supplemental IDS after filed a response to a restriction requirement was reasonable. Summary: Gilead appealed DC decision regarding … Continue reading

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