Patentee not entitled to additional patent term adjustment despite USPTO issuance of incomplete restriction requirement

Pfizer, Inc. v. Lee, No. 2015-1265 (Fed. Cir. Jan. 22, 2016)

The patentee appealed a USPTO determination of patent term adjustment (PTA) by filing suit in the District Court for the Eastern District of Virginia. The district court granted summary judgment for the USPTO, finding no additional PTA. A divided Federal Circuit affirmed the district court’s decision.  

The patentee appealed the district court’s decision not to grant 197 days of additional PTA “A delay,” which awards PTA for delays arising from the USPTO’s failure to act by certain examination deadlines. The patentee argued that the USPTO’s issuance of a first restriction requirement that omitted six dependent claims from its classification was incomplete and, thus, failed to satisfy the notice requirement of Section 132 and such delay should include the time up to the date of the corrected restriction requirement. The Federal Circuit rejected this argument, stating that the initial restriction requirement “satisfied the statutory notice requirement because it informed the applicant of the broad statutory basis for the rejection of his claims.” As the court explained, because the examiner clearly defined the invention groups available for election and further prosecution, the patentee was “placed on sufficient notice of the reasons for the examiner’s restriction requirement,” such that the correction of this requirement did not represent a further delay.  

Judge Newman dissented, stating that the USPTO’s admittedly incomplete restriction requirement contributed to the delay in the issuance of the patent. The dissent argued that the majority’s interpretation of the statute was contrary to the letter and purpose of the law, which is to compensate for delays of proceedings that are not the fault of the applicant.

A copy of the opinion can be found here