Deca-Medics, Inc. has filed a complaint in the U.S. District
Court for the Eastern District of Virginia challenging a Patent
Term Adjustment (PTA) award based on how its patent application was
processed after a Notice of Appeal was filed. While I have written
about the problem with the USPTO's interpretation
of 35 USC § 154(b)(1)(B)(ii) and the USPTO is
considering changing the rule
that interprets that portion of the PTA statute, Deca-Medics takes
a different approach in its complaint.
The Deca-Medics Prosecution Delays
Deca-Medics challenges the PTA awarded to U.S. Patent 8,092,404. The
events surrounding the delay at issue are outlined below:
April 21, 2009: USPTO issues final
October 16, 2009: Deca-Medics files
Notice of Appeal with Extension of Time
May 17, 2012: Deca-Medics files
Appeal Brief with Extension of Time
August 30, 2010: Deca-Medics files
revised Appeal Brief with Extension of Time
February 16, 2011: USPTO issues new
Office Action withdrawing April 21, 2009 final Office Action
According to the Deca-Medics complaint, the USPTO's PTA
award for the '404 patent does not include any award for the
delays during this time period.
The Statutory Framework
The PTA issue in this case stems from the award for
"B" delay, which accrues when the USPTO fails to issue a
patent within three years of the actual filing date of the patent
application. The relevant section of the PTA statute (§
154(b)(1)(B)(ii)) excludes from a "B" delay award
any time consumed by appellate review
by the Board of Patent Appeals or Interferences ....
On the other hand, the "C" delay provision of the PTA
statute compensates applicants for delays due to an appeal, but
only in cases where "the patent was issued under a decision in
the review reversing an adverse determination of
This means that if an applicant appeals a rejection and wins at
the Board, B delay will not accrue while the application was on
appeal, but C delay will. But if an applicant files a Notice of
Appeal and never gets to the Board, the current USPTO rules do not
award any PTA for post-Notice of Appeal delays.
While the USPTO announced in a December 28, 2011 Federal Register Notice
that it was considering changing the PTA rules such that the
carve-out from B delay due to "time consumed by appellate
review" would not commence until the Board assumes
jurisdiction over the appeal instead of the date that a Notice of
Appeal is filed, the USPTO has yet to implement that change.
The Deca-Medics Complaint
Instead of challenging the USPTO's interpretation of the
"B" delay carve-out, the Deca-Medics complaint asserts
that it should be awarded "C" delay as if it was the
Board, and not the examiner, who withdrew the April 20, 2009 final
Office Action. Deca-Medics takes the position that the USPTO's
unilateral decision to reopen prosecution deprived the patent of
PTA that it would have been awarded if its appeal had been
permitted to proceed to the Board and the Board had reversed the
rejections. Deca-Medics argues that the USPTO violates the intent
of the PTA statute by treating applications in which the rejections
are withdrawn after a Notice of Appeal has been filed the same as
applications that receive an adverse
Board decision on appeal.
Deca-Medics' position appears to be in line with an earlier
proposed rule change that the USPTO announced in an April 6, 2011
Federal Register Notice. In accordance with that
proposal, the USPTO would have treated an examiner's decision
to reopen prosecution after a notice of appeal as a "decision
in the review reversing an adverse determination of
patentability" under 35 USC § 154(b)(1)(C)(iii). As such,
the application would accrue "C" delay "equal [to]
the number of days in the period beginning on the date on which a
notice of appeal . . . was filed . . . and ending on the date of
mailing of the Office action under 35 USC § 132 or a notice of
allowance under 35 USC § 151." As I explained previously, I was not
comfortable with that proposal, because I do not think it comports
with the plan language of the statute, which refers to
"appellate review by the
The USPTO Needs to Address the Post-Notice of Appeal
It will interesting to see how the USPTO responds to this
complaint, and whether it prompts the USPTO to issue a final rule
that addresses the post-Notice of Appeal PTA problem. Many patent
applications endure USPTO delays after a Notice of Appeal is filed
without jurisdiction ever being transferred to the Board. Given the
general statutory intent to provide a "GUARANTEE OF PROMPT
PATENT AND TRADEMARK OFFICE RESPONSES" and a "GUARANTEE
OF NO MORE THAN 3-YEAR APPLICATION PENDENCY," the USPTO's
refusal to account for its delays during this time period surely
must be contrary to law.
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