Mehran Arjomand and Megan McLean Poon authored an article for Wolters Kluwer's IP Litigator discussing the Federal Circuit's recent decision in Sawstop v. Vidal.
"Patent Term Adjustment (PTA) is additional patent term for US patents to compensate for delay in issuance," the authors wrote. "The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO ('A delay'), failure to issue a patent within three years ('B delay'), and delay due to appeal ('C delay'). For C delay, patent term is extended for 'appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.'"
They added: "In Sawstop v. Vidal, the Federal Circuit read the italicized statutory language for C delay narrowly, thereby limiting the likelihood of an appeal conferring additional PTA. First, the Court read 'reversing an adverse determination of patentability' to require that a claim after appeal be 'substantively allowable, not just free of a particular rejection.' Second, the Court read "the patent was issued under a decision in the review" to require that the claim not 'differ substantively' from appeal to issuance. While the Court addressed two different patents, its analysis of US Patent No. 9,522,476 exemplifies its narrow reading of the statutory language."
Read the full article.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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