Even substantive defects in notices such as restriction requirements may not toll the clock for patent term adjustment purposes. Here, for example, no A Delay was found to be due for the time period between an initial and subsequently withdrawn restriction requirement and a corrected restriction requirement because the applicants could have deduced how the six claims omitted from the analysis in the initial restriction requirement should have been categorized. “[T]he examiner’s initial restriction requirement satisfied the statutory notice requirement because it informed the applicant of ‘the broad statutory basis for [the rejection of] his claims.’” It may therefore be best to go ahead and respond to any informative albeit defective notices rather than request correction in order to preserve patent term adjustment.
Background / Facts: The patent on appeal here from patent term adjustment (PTA) calculations at the PTO is directed to a pharmacological method utilized in the treatment of cancer. During prosecution, the applicants pointed out to the examiner that an initial restriction requirement had omitted six claims from its categorization of the various claims in the application. The examiner agreed to withdraw the restriction requirement and issue a corrected restriction requirement. Upon issuance, however, the PTO refused to award any PTA “A” Delay for the 197 days that elapsed between the issuance of the first restriction requirement and the mailing of the corrected restriction requirement. The Patent Act provides that A Delay will stop accruing when the PTO “provide[s] at least one of the notifications under Section 132.”
Issue(s): Whether the PTO’s original restriction requirement failed to satisfy the notice requirement of Section 132 because it failed to classify six dependent claims into the examiner’s defined invention groups, and thus failed to place the applicants on notice of the restriction requirement as to those dependent claims.
Holding(s): No. “[T]he examiner’s initial restriction requirement satisfied the statutory notice requirement because it informed the applicant of ‘the broad statutory basis for [the rejection of] his claims.’ [] Here, the examiner’s detailed descriptions of the 21 distinct invention groups outlined in the examiner’s initial restriction requirement were clear, providing sufficient information to which the applicants could have responded. Indeed, the applicants never challenged the content of the invention groups defined by the examiner. And, significantly, the examiner’s defined invention groups remained identical between the two restriction requirements. [] Viewed as a whole, the restriction requirement provided adequate grounds on which the applicants could ‘recogniz[e] and seek[] to counter the grounds for rejection.’ [] Therefore, because the examiner clearly defined to the applicants the invention groups available for election and further prosecution, the applicants were placed on sufficient notice of the reasons for the examiner’s restriction requirement.”