shutterstock_514586758A patent has a term of twenty years from the patent application’s effective filing date.1 To compensate inventors for any undue delays in patent examination caused by the U.S. Patent and Trademark Office (“USPTO”), Congress established a system to adjust patent term. In Pfizer v. Lee, the Federal Circuit examined whether certain errors caused by the USPTO give rise to Patent Term Adjustment (“PTA”).2

The Patent Term Guarantee Act provides for the restoration of patent term in three circumstances: (i) an “A-Delay,” which awards PTA for delays arising from the USPTO’s failure to act by certain examination deadlines; (ii) a “B-Delay,” which awards PTA for an application pendency exceeding three years; and (iii) a “C-Delay,” which awards PTA for delays due to interferences, secrecy orders, and appeals. The USPTO calculates PTA by adding the A-, B-, and C-Delays, subtracting any overlapping days, and then subtracting any days attributable to applicant delay.3

When a patent is ready to issue, the USPTO determines whether any PTA delay has accrued and informs the applicant regarding the length of any term to be restored to the issued patent. An applicant can appeal the USPTO’s determination of PTA by filing an action in the United States District Court for the Eastern District of Virginia.4 With respect to A Delay, the Act provides for restoration of patent term “if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after” – (I) the date on which an application was filed or (II) the date of commencement of the national stage in an international application.5 It is “A Delay” that is at issue in Pfizer.

On May 2, 2003, Wyeth filed U.S. patent application number 10/428,894 (“’894 application”). The statutory deadline for the USPTO to issue its first office action expired on July 2, 2004 (i.e., 14 months from the date the application was filed). On August 10, 2005, 404 days after the July 2, 2004 deadline, the PTO mailed a restriction requirement. Generally, a restriction requirement would be considered an office action under Section 132 because it informs the applicant of reasons why its claims are considered to be directed to separate inventions. The deadline for Wyeth to reply to the restriction requirement was February 10, 2006. On February 6, 2006, Wyeth participated in a telephone interview with the Examiner and explained that the restriction requirement had omitted claims 75, 76, and 103-106 from its categorization of the various claims in the application. During the interview, the Examiner acknowledged that the restriction requirement was not complete and agreed to withdraw it and issue a corrected restriction requirement. The PTO issued a corrected restriction requirement on February 23, 2006, 601 days after the July 2, 2004 deadline.

On April 10, 2012, the ’894 application issued and was awarded PTA of 1291 days, of which 684 days were attributed to A Delay. The PTO did not award A Delay for the 197 days that elapsed between the issuance of the first restriction requirement and the mailing of the corrected restriction requirement. It is that 197 days which are at issue.

Wyeth appealed the district court’s judgment declining to award Wyeth restoration of the patent term for the extra 197-day period in question. Wyeth argued that the USPTO’s original restriction requirement failed to satisfy the notice requirement of Section 132 because it failed to classify six dependent claims into the examiner’s defined invention groups, and thus failed to place the applicants on notice of the restriction requirement as to those dependent claims.

The Federal Circuit disagreed with Wyeth citing, inter alia, Chester v. Miller, wherein the court held that “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.”6 Section 132 merely requires that an applicant “at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence.”

The Federal Circuit stated, the restriction requirement provided adequate grounds on which the applicants could “recogniz[e] and seek[] to counter the grounds for rejection.” Therefore, because the examiner clearly defined the invention groups available for election and further prosecution, the applicants were placed on sufficient notice of the reasons for the examiner’s restriction requirement. The court further stated, the process of patent prosecution often involves changes in both the applicant’s and examiner’s positions, an examiner’s reissuance of an office action in response to an applicant’s suggestion does not automatically mean that an application has been delayed” for purposes of patent term adjustment.

Judge Newman dissented, stating that the issue is simply whether the delay that necessarily ensued is an “‘A Delay” subject to inclusion in the term adjustment. Judge Newman would have granted Wyeth additional PTA, reasoning that the statutory purpose is clear: when patent issuance is delayed because of proceedings that are not the fault of the applicant, the patent term is extended to compensate for the delay.

1 35 U.S.C. § 154(a)(2)
2 Pfizer, Inc. v., Michelle K. Lee, No. 2015-1265, (Fed. Cir. January 22, 2016).
3 35 U.S.C. § 154(b)
4 35 U.S.C. § 154(b)(4)
5 35 U.S.C. § 154(b)(1)(A)
6 Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990).