Patent term extension afforded to a parent application does not extend to any continuing applications. Here, for example, two divisional applications were found not to be entitled to the patent term adjustment in the parent application arising from the delay in issuing a first action even when that first action was a restriction requirement that necessitated the divisional application filings. “[T]he term of any patent arising from a continuing application is not restored for delay in the prosecution of the parent patent’s application.” It may therefore be best to avoid filing an application with disparate claim groups that are likely to be restricted at least when patent term is particularly important to the applicant.
Background / Facts: The patents on appeal here from the PTO were issued from divisional applications but denied the same patent term extension afforded to the parent application based on delay in issuing the restriction requirement that necessitated the divisional application filings. The relevant statutory provision, 35 U.S.C. § 154(b)(1)(A), requires that a notice be sent to the applicant within 14 months of the date of filing a domestic application or the start of the national stage of an international application. Included among the types of notices due under section 132 is the notice of a restriction requirement.
Issue(s): Whether the 1,476 days of patent term extension afforded to the parent application due to the delay in issuing the restriction requirement should be likewise afforded to the divisional applications necessitated by the restriction requirement.
Holding(s): No. “The 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. In other words, the term of any patent arising from a continuing application is not restored for delay in the prosecution of the parent patent’s application. The statute’s reference to ‘an original patent’ and later to ‘an application’ does not conclusively show that Congress intended the provision to refer to multiple applications merely because it used ‘an’ in the second instance instead of ‘the.’”