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When Can the PTO Extend a Patent’s Term Due to Delay From an Appeal?

| Adam AquinoKaren Cassidy

CHUDIK V. HIRSHFELD

Before Taranto, Bryson, and Hughes. Appeal from the United State District Court for the Eastern District of Virginia

Summary: An examiner’s self-reversal may not qualify as “reversing an adverse determination.” 

In 2006, Chudik applied for a patent for a shoulder surgery guide.  Following the Examiner’s second rejection of the pending claims in 2010, Chudik requested continued examination.  In 2014, following the Examiner’s final rejection of the pending claims, Chudik appealed to the Board.  In response, the Examiner reopened prosecution and rejected the claims on new grounds.  This process was repeated in 2015 and 2016.  Finally, in 2017, while Chudik’s fourth appeal was pending, the Examiner withdrew some objections and, following some claim amendments, allowed some of Chudik’s patent claims.  Chudik’s patent issued on May 15, 2018, eleven and a half years after filing.  The PTO awarded Chudik a patent term adjustment of 2,066 days, but rejected Chudik’s argument that he was entitled to an additional 655 days for the time his four notices of appeal were pending.  35 U.S.C. § 154(b)(1)(C) governs delay due to appellate review by the Board or a federal court (C-delay).  C-delay requires that “the patent [be] issued under a decision in the review reversing an adverse determination of patentability.”  The PTO concluded that the C-delay provision does not apply here because (1) the Board’s jurisdiction over the appeals never attached and (2) there was no Board reversal.  Chudik then filed a complaint against the PTO in district court, alleging that he was entitled to the additional 655 days of C-delay.  The district court rejected Chudik’s challenge, and Chudik appealed.

On appeal, Chudik argued that the Examiner reversed an adverse determination of patentability by reopening examination and allowing patent claims after Chudik appealed to the Board. The Federal Circuit disagreed, reasoning that “appellate review,” ordinarily means that a separate party must determine the merits of the review.  Therefore, the Examiner’s self-reversal did not fall qualify as “reversing an adverse determination” under § 154(b)(1)(C)(iii).  The Federal Circuit affirmed without resolving the PTO’s other grounds for its denial—when jurisdiction over an appeal to the Board attaches.

Editor: Paul Stewart