USPTO cannot count time during which applicant is unable to take action as applicant delay
Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (Fed. Cir. Jan. 23, 2019)
During prosecution of its U.S. patent application, the patent owner filed a request for continued examination (RCE) after a final Office Action. After filing the RCE, the patent owner learned that an opposition had been filed against the corresponding European patent. One hundred days after receiving notification of the opposition, the patent owner filed a supplemental information disclosure statement (IDS). The U.S. application ultimately issued as a patent, and the U.S. Patent and Trademark Office (USPTO) decided that the patent should receive 1,260 days of Patent Term Adjustment (PTA). The PTA time included an assessment of 646 days of applicant delay for the time between the filing of the RCE and the submission of the IDS. The patent owner filed a request for reconsideration of the PTA but the USPTO rejected the request, concluding that the prior Federal Circuit decision in Gilead Sciences, Inc. v. Leeapplied and the reduction in PTA was proper.