The requested URL /esi/auxiliary-nav.html was not found on this server.
Additionally, a 404 Not Found error was encountered while trying to use an ErrorDocument to handle the request.
February 16, 2021
Edited by Christina Ji-Hye Yang; Elizabeth D. Ferrill
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).
Copyright © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Seminar
12th Annual Ethics in the Practice of Intellectual Property Law Seminar
June 4, 2021
Virtual
Webinar
Update on Subject-Matter Eligibility at the EPO and USPTO For Life Sciences
April 15, 2021
Webinar
Due to international data regulations, we’ve recently updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.