Don’t B Late; Federal Circuit Interprets the B Delay Calculation

Mayo Foundation v. Iancu reads more like an arithmetic problem than a Federal Circuit decision. The reason is the case involves the Patent Term Adjustment Act (PTA) (see 35 U.S.C. § 154(b)). PTA determinations require calculating how many days of delay, from the effective filing date to the Notice of Allowance, are attributable to the applicant and how many to the PTO. Under one PTA scenario, the applicant is entitled to an adjusted term, recovering every day the application is pending beyond three years past the effective filing date for the balance of delay attributable to the PTO. This is called a “B Delay” (§154(b)1)(B)). However, the B Delay is subject to several exclusions. The disputed exclusion in Mayo concerned a Request for Continued Examination (RCE) of the application, which Mayo filed before the PTO declared an interference. 

The period in dispute is 194 days that lapsed between the interference proceeding terminating and the Notice of Allowance. During that timeframe, the examiner reopened examination and issued an Office Action rejecting the claims. Mayo asserted that the 194 days are attributable to the PTO because Mayo did not request examination after the interference. However, the PTO argued that RCE time was still running and only terminated when the Notice of Allowance was mailed.

The Federal Circuit noted two points in concluding there was no B Delay. First, an Interference and a Notice of Allowance are treated differently for calculating PTA. Although at least one claim must be in condition for allowance before an interference can be declared, additional examination is possible. Second, the examiner reopening examination sua sponte after an interference was RCE time under the PTA. Therefore, applicants should be aware that requesting continued examination for interference purposes might expose them to subsequent examination that can decrease their patent term.

By Aaron Morrow and Jake Michalakes

Copyright © 2019, K&L Gates LLP. All Rights Reserved.