Filing a supplemental document after submitting a reply constitutes an unreasonable delay by the applicant for the purposes of PTA adjustment. Here, for example, the filing of a supplemental IDS after submitting a reply to an initial restriction requirement was found to constitute an unreasonable delay for the period between the reply and the IDS even though no actual delay occurred.
Background / Facts: This appeal involves § 154(b)(2)(C), which reduces the Patent Term Adjustment (“PTA”) period by accounting for delays caused by the patent applicant. The statute states that the PTA period shall be reduced by the period of time during which “the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” In this case, following a response to an initial restriction requirement and while waiting for the PTO to issue a first office action on the merits, the applicant filed a supplemental information disclosure statement (“IDS”) disclosing two other commonly owned and co-pending patent applications. A notice of allowance was issued one year later with a fifty-seven day reduction in PTA being assessed for the period between the initial reply to the restriction requirement and the filing of the supplemental IDS.
Issue(s): Whether filing a supplemental IDS after submitting a reply to a restriction requirement constitutes a failure to engage in reasonable efforts to conclude prosecution of the application.
Holding(s): Yes. “[T]he legislative history of the statute does not support the finding that Congress aimed to distinguish between patent applicants whose conduct attempts to delay issuance of a patent from those whose conduct actually results in a delay.” Further, the PTO’s position “is a reasonable interpretation of the statute because the filing of a supplemental IDS after an initial reply to a restriction requirement further adds to the list of documents the PTO must consider before responding to the restriction requirement. Therefore, the additional documents make it increasingly difficult for the PTO to satisfy the statutorily-mandated time requirement stipulated in § 154(b)(1)(A)(ii).”