For the purposes of calculating the patent term adjustment under § 154(b), the time between allowance and issuance is not “time consumed by continued examination” and therefore not to be excluded from adjustments given to the patentee under § 154(b)(1)(B)(i).
Background / Facts: This appeal involves the statutory construction of 35 U.S.C. § 154(b), which charges the PTO with an application pendency goal of three years, reflecting the replacement of a term of seventeen years from issuance by a term starting at issuance but ending twenty years after. The provision in question relates to determinations of the patent term adjustment under § 154(b)(1)(B)(i) as it applies to an applicant’s request for continued examination under 35 U.S.C. § 132(b). It states that the guarantee of no more than three years pendency does not include “any time consumed by continued examination of the application requested by the applicant under section 132(b).”
Issue(s): Whether the “time consumed by continued examination” should be limited to the time before allowance, as long as no later examination actually occurs.
Holding(s): Yes. “We reject the PTO’s view that the time after allowance, until issuance, is ‘time consumed by continued examination’ and so is excluded from adjustments given to the patentee. Such time from allowance to issuance undisputedly would count toward the PTO’s three-year allotment in a case not involving a continued examination. There is no basis for distinguishing a continued examination case.”