Subsequent Examination After RCE and Interference Proceeding Are Not PTO Delay

MAYO FOUNDATION FOR MEDICAL EDUCATION AND RESEARCH v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE

Before:  Newman, Lourie, and Dyk

Summary:  Where a request for continued examination has previously been filed, the time between terminating an interference and the notice of allowance is not PTO delay for purposes of calculating patent term adjustment.

In general, an applicant is entitled to patent term adjustment for PTO delay beyond three years.  During prosecution, Mayo filed an RCE and an interference over cited prior art.  After Mayo prevailed in the interference, the examiner issued a new rejection, Mayo replied, and the Examiner issued a notice of allowance.  The PTO concluded that the time between terminating the interference and issuing the notice of allowance did not count as PTO delay based on a regulation stating that the time between filing an RCE and mailing the notice of allowance does not count. 

In the district court, Mayo argued the regulation misinterpreted the statue because an interference terminates RCE time for calculating PTO delay.  Mayo argued that continued examination ends once the claims are “deemed allowable” and an interference cannot be declared unless the claims are “deemed allowable” but for the outcome of the interference.  Mayo also argued the examiner reopening examination and finding a new ground for rejection after the interference should be counted as PTO delay.  The lower court disagreed and Mayo appealed.

The Federal Circuit affirmed, holding that instituting an interference is not “tantamount to a Notice of Allowance.”  The Federal Circuit relied on the PTO’s argument that Mayo’s interpretation would “require an unduly burdensome, fact-intensive inquiry into when the PTO actually conceded the allowability of the claims” and would turn PTA calculation into a “hotly contested factual inquiry in nearly every PTA case.” 

Editor: Paul Stewart

Written by: Alexander D. Zeng & Adam Powell