PTA Determinations after 84 F.R. 20343/Supernus

On May 9, 2019, the USPTO issued a notice concerning its patent term adjustment procedures in light of the Federal Circuit’s decision in Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019). Although the notice states that the USPTO would be modifying its procedures in light of Supernus, it is not, doing so. In fact, the USPTO will continue to base its PTA calculations on its PALM system, as it always has, and will continue to rely on Applicants to timely file a request for reconsideration of the USPTO’s calculated PTA.

In Supernus, patentee filed an RCE on February 22, 2011. An EP counterpart was involved in an opposition proceeding, and the EPO issued a communication in connection with the opposition on August 21, 2012. Patentee filed a SIDS making the notice of opposition and documents cited by the EPO in the communication of August 21, 2012 of record on November 29, 2012.

Because the SIDS was not filed with the RCE, the entire 646 days between the filing of the RCE and the SIDS was counted as Applicant delay by the USPTO and deducted from Patentee’s PTA. Patentee argued that there was nothing they could have done between the time of filing of the RCE and the issuance of the EPO communication to “conclude prosecution…of the application” as per 35 USC 154 (b)(2)(C)(i). In other words, they could not possibly have disclosed the references that they only learned of on August 21, 2012 any sooner than August 21, 2012.

The Federal Circuit agreed, and so, patentee was given back all but 100 days of applicant delay (the number of days between the issuance of the EPO communication and the filing of the SIDS).

With this Federal Register Notice, the USPTO has acknowledged this decision, while also acknowledging that their current method of calculation of PTA does not contain information related to the mailing date of foreign actions. And so, the USPTO will continue calculating PTA’s from the information available to them, via the PALM system, and has said that “A patentee who believes that the period of reduction provided for in 37 CFR 1.704(c)(8)… exceeds the period of time during which the patentee failed to engage in reasonable efforts to conclude prosecution of the application because there is no identifiable effort the patentee could have undertaken to conclude prosecution of the underlying application may raise the issue in a timely request for reconsideration of the patent term adjustment under 37 CFR 1.705(b).”

The USPTO further stated in the notice that it expects “the situation in Supernus should arise infrequently”. However, in my opinion, the Supernus argument could be made for any IDS or SIDS filed after the filing of an application, office action response or RCE, as delay is attributed to Applicant in each of these. If the IDS or SIDS is being filed in response to an action received from a foreign patent office, or even a subject matter related US application, it would seem that the Supernus argument could be used to avoid the attribution of delay from the date of filing of the application, response, or RCE to the date of receipt of the action in the related matter. In none of these instances is there any identifiable effort on the part of Applicant that could be undertaken to learn of these references any sooner than the mailing date of the action in the related matter. And, at least in my practice, this situation is not infrequent.

Practice suggestions in light of 84 Fed. Reg. 20343/FR 20343Supernus:

1) When receiving foreign office actions in families with pending US cases, instead of/in addition to docketing a SIDS for 3 months, check the US case right away to see if a SIDS should be filed sooner to avoid any Applicant delay.

2) When reviewing PTA determinations, confirm that date of receipt of information did not cause “Applicant delay”.