Patent Term Adjustment of Parent Application Does Not Extend to Continuation Applications - Hossein Mohsenzadeh v. Michelle K. Lee

McDermott Will & Emery

Addressing for the first time whether a patent term adjustment in a parent application is applicable to continuing applications, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment in favor of the Patent and Trademark Office (PTO), finding that the patent term adjustment statute “does not provide patent term adjustment in continuing applications based on delays in the prosecution of parent applications.” Hossein Mohsenzadeh v. Michelle K. Lee, Case No. 14-1499 (Fed. Cir., June 25, 2015) (Reyna, J.).

The patent term adjustment statute requires the PTO to extend the term of a patent by one day for each day the issuance of a patent is delayed under either section 35 U.S.C. § 154(b)(1) (A) or (B). Section (A) provides for an extension when the PTO fails to timely take certain actions or provide certain notices to the patentee, while section (B) provides an extension when the PTO fails to issue a patent within three years of the actual filing date of the application. This case concerns only Section (A), which requires the PTO is to provide “at least one of the notifications under § 132 or a notice of allowance under § 151 not later than 14 months after” the date on which an application was filed.

Mohsenzadeh filed a patent application on July 6, 2001, but did not receive a restriction requirement (i.e., a notification under § 132) until September 21, 2006—more than 14 months after the application was filed. In response to the restriction, Mohsenzadeh elected two groups of claims and cancelled the remaining two groups, choosing to pursue those groups in divisional applications. When the original patent issued, the PTO granted a patent term adjustment of 2,104 days. But, when the two divisional applications directed to the non-elected groups issued, the PTO did not apply the patent term adjustment from the parent application to these divisional applications. The PTO denied Mohsenzadeh’s request for reconsideration, explaining that any delays arising prior to the actual filing date of the application will not apply to the patent issued from that application.

Mohsenzadeh challenged the PTO decision at the district court under the Administrative Procedures Act. In district court, the government argued that § 154(b)(1)(A) was not intended to cover both parent and continuing applications because Congress could have, but did not, refer to both applications as it had done in a related statute and that the statute’s amendment history confirms that the statute only applies to the application in which the adjustment was applied. Mohsenzadeh argued that the term “an application” signified an intent to adjust the terms of all patents impacted by PTO delays. The district court granted the government’s motion for summary judgment, holding that the statute unambiguously requires that a patent term adjustment apply for delays that occurred during prosecution of the actual application from which the patent directly issued, not the application from which it derived priority. Mohsenzadeh appealed.

On appeal, the Federal Circuit affirmed the district court, concluding that the statute “does not provide patent term adjustment in continuing applications based on delays in the prosecution of parent applications.”

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