Opting for Continued Examination May Lead to a Shorter Patent Term Adjustment

In Chudik v. Hirschfeld, No. 2020-1833 (Fed. Cir. Feb. 8, 2021), the Federal Circuit held that C-delay patent term adjustment is not available if the applicant elects to continue examination, gets another rejection, appeals, and the examiner reopens the examination.

Dr. Chudik filed a patent application, for which the examiner issued two non-final rejections. Instead of appealing, Dr. Chudik filed a request for continued examination. In response, the examiner issued another rejection. Dr. Chudik then appealed, but the examiner reopened prosecution and issued a new rejection. Dr. Chudik filed three more appeals, but the examiner reopened prosecution every time, and eventually allowed the claims. Dr. Chudik’s patent term was adjusted, but he petitioned for more under §154(b)(1)(C). The PTO and district court rejected his argument.

The Federal Circuit affirmed on appeal. The Court held that Dr. Chudik’s appeals did not qualify as “appellate review” under §154(b)(1)(C) because each appeal led to the examiner reopening the case to review her own decision. In dicta, the Federal Circuit noted that if Dr. Chudik appealed after the second non-final rejection, then he would have qualified for additional term pursuant to B-delay, but electing continued examination triggered a statutory exclusion under §154(b)(1)(B)(i).