Time Following Termination of Interference After RCE Reduces Patent Term Adjustment

In Mayo Foundation for Medical Education and Research v. Iancu, No. 2018-2031 (Fed. Cir. Sept. 16, 2019), the Federal Circuit affirmed the district court’s decision that the USPTO properly concluded that Patent Term Adjustment (PTA) is reduced by the period after an interference concludes and the issuance of a notice of allowance, when the interference followed the filing of an Request for Continued Examination (RCE).

PTA can accrue when a patent application is pending for more than three years, but can also be reduced by “any time consumed by continued examination of the application requested by the applicant” and “any time consumed by a proceeding under [interference proceedings].” During prosecution of U.S. Patent Application No. 12/421,310, Mayo filed an RCE. After the RCE filing, the examiner declared an interference. After the interference concluded, the examiner issued an office action and subsequently issued a Notice of Allowance. Mayo’s timeline below summarizes the prosecution:

The USPTO deducted period 3 (04/23/14 to 11/03/14) in this chart from the PTA. Mayo disputed this. A district court confirmed the USPTO’s interpretation and Mayo appealed.

On appeal, the Federal Circuit affirmed the decision that the period after conclusion of an interference up to a notice of allowance is deducted from PTA when the interference followed an RCE filing. The court rejected Mayo’s argument that an interference is equivalent to a notice of allowance because claims must be “deemed allowable” to enter an interference. The court explained that the “[USPTO] regulations as a whole do not indicate that a declaration of an interference is tantamount to a Notice of Allowance.” The court also reasoned that the filing of an RCE is not limited to issues the applicant would like resolved, but also allows the examiner to issue new rejections before allowance.

The court held that “where an RCE has previously been filed, the time between termination of an interference and the date of mailing of the Notice of Allowance is ‘time consumed by continued examination’” that reduces PTA.

Judge Newman dissented, reasoning that Mayo had not requested further examination after the interference and that the majority’s result is contrary to patent policy.