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23 September 2019AmericasRory O'Neill

Federal Circuit upholds Inter-Cellular PTA delay

The US Court of Appeals for the Federal Circuit has ruled that delays resulting from challenges to patent examiners’ final decisions will be attributed to the applicant when calculating patent term adjustment (PTA).

In the decision, issued last Wednesday, September 18, the Federal Circuit ruled that a submission filed by I nter-Cellular Therapies after a final US Patent and Trademark Office (USPTO) action did not constitute “reasonable efforts to conclude prosecution”, and therefore amounted to applicant delay.

The dispute arose after Inter-Cellular Therapies appealed against the USPTO’s PTA calculation on its patent covering a type of salt crystal (US number 8,648,077).

After the USPTO issued a final office action rejecting certain patent claims, Inter-Cellular filed a response further challenging the examiner’s determinations.

According to the USPTO, this did not meet the requirements for what constituted a “proper reply” to a final office action.

Inter-Cellular then filed a successful second response, 21 days after its initial filing. In this second response, it dropped the claims which had been rejected by the USPTO.

In calculating PTA for the patent, the USPTO then deemed the 21-day period it took Inter-Cellular to file a successful response to the final office action to be “applicant delay”.

This decision was affirmed by the US District Court for the Eastern District of Virginia on appeal in 2018, and subsequently by the Federal Circuit last week.

According to the Federal Circuit, a submission which continued to argue against the examiner’s final determinations without good cause qualified as a “failure to engage in reasonable efforts to conclude prosecution”.

Inter-Cellular had argued that its response was an effort to conclude prosecution because it addressed each outstanding rejection and objection to its patent claims.

“Intra-Cellular’s reading appears to be in tension with the fact that it no longer had the right to continue debating the merits of the rejection once the final office action issued in this case,” the Federal Circuit ruled.

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