By Donald Zuhn --
Last month, in Mohsenzadeh v. Lee, the Federal Circuit affirmed the decision by the District Court for the Eastern District of Virginia granting summary judgment to the Director of the U.S. Patent and Trademark Office that the Office had properly calculated the Patent Term Adjustment (PTA) for U.S. Patent Nos. 8,352,362 and 8,401,963. The instant appeal involves 35 U.S.C. § 154(b)(1)(A), which requires that the Office send a notification under § 132 or a notice of allowance under § 151 to the applicant within fourteen months of the date of filing of an application or the commencement of national stage of an international application. At issue in the instant appeal was the impact of a delayed restriction requirement, one type of notification under § 132.
Appellant Hossein Mohsenzadeh filed U.S. Application No. 09/899,905 on July 6, 2001. More than five years after the '905 application was filed, the Office issued a restriction requirement restricting the claims into four groups. The group of claims that Mohsenzadeh elected to prosecute issued as U.S. Patent No. 7,742,984, with the Office granting Mohsenzadeh 2,104 days of PTA, of which 1,476 days was due to the Office's delay in issuing the restriction requirement. Mohsenzadeh filed two divisional applications from the '905 application, each corresponding to a group of claims identified as a separate invention in the restriction requirement issued for the '905 application. Those applications later issued as the '362 and '963 patents, with the Office granting 0 days of PTA to both patents.
Mohsenzadeh requested reconsideration of the PTA determinations for the '362 and '963 patents, arguing that both patents were entitled to 1,476 days for the Office's delay in issuing a restriction requirement in the '905 application. The Office denied the requests, and pursuant to 35 U.S.C. § 154(b)(4)(A), Mohsenzadeh filed an action challenging the denials in the Eastern District of Virginia. The Office moved for summary judgment, which the District Court granted, finding that § 154 unambiguously requires that PTA apply for delays that occurred during the prosecution of the actual application from which the patent directly issued, and not the application from which it derived priority. The District Court also found that the Office's interpretation of § 154 was reasonable and entitled to deference.
On appeal, Mohsenzadeh argued that § 154 was enacted to adjust the terms of all patents impacted by Office delays, and relied on the text of the statute to support that argument. The relevant part of the statute reads (emphasis added):
[I]f the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—
(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an international application;
. . .
the term of the patent shall be extended 1 day for each day [of delay].
Mohsenzadeh argued that delays in the issuance of "an original patent" (the '362 and '963 patents) were caused by the delay in providing a notification in "an application" (the '905 application). The Office responded by arguing that the history of amendment of § 154(b)(1)(A)(i) confirms that Congress was referring to a single application throughout, noting that an earlier draft of the statute omitted (i)(II) and used the definite article, referring to "the application was filed under section 111(a)" (emphasis added). However, when Congress amended the statute to include (i)(II), the indefinite article was used for both (i)(I) and (ii)(II).
In affirming the District Court's grant of summary judgment to the Office, the Federal Circuit determined that "[t]he language of the provision of the patent term adjustment statute at issue, 35 U.S.C. § 154(b)(1)(A), clearly shows that Congress intended delay in the prosecution of an application to be restored to a single patent, the patent issuing directly from that application." According to the Court, support for its determination could be found in the amendment of § 154 to change "the application" to "an application," which "signifies that Congress did not intend for patent term adjustments in continuing applications to be made for delays in parent applications." As the Federal Circuit explained, "[t]he indefinite article, thus, appears not to allow for reference to a different application than the one ripening into 'an original patent,' but simply to signify Congress' adjustment of the statute to account for the fact that a patent may arise either from a domestic application or an international application." "Because the plain language of 35 U.S.C. § 154(b)(1)(A) does not provide patent term adjustments in continuing applications based on delays in the prosecution of parent applications," the Federal Circuit affirmed the District Court's grant of summary judgment.
Mohsenzadeh v. Lee (Fed. Cir. 2015)
Panel: Circuit Judges Moore, Schall, and Reyna
Opinion by Circuit Judge Reyna