Pfizer v. Lee:  They Said Enough—PTO Satisfies Notice Requirement Despite Omitting Claims

CAFC Decision: Pfizer, Inc. v. Lee, No. 2015-1265 (Fed. Cir. Jan. 22, 2016)

Background: During prosecution of Pfizer’s patent application covering a treatment for cancer, the PTO issued a restriction requirement that omitted certain claims. Pfizer notified the PTO of the omission, and the examiner sent a corrected restriction requirement that restarted the response period.

Issue: Should the 197-day period between the first and second restriction requirements be included in the patent term adjustment (“PTA”) calculation because the delay was caused by the PTO’s failure to provide adequate notice as to its treatment of the omitted claims?

Outcome: The Federal Circuit held that the original restriction requirement satisfied the PTO’s notice requirement because it informed Pfizer of “the broad statutory basis” for the treatment of the omitted claims. The Court noted that because the omitted claims depended from independent claims cited in the original restriction requirement, and because the two restrictions were nearly identical, Pfizer was on notice of the PTO’s treatment of the omitted claims. Thus, the delay associated with sending the corrected restriction requirement had no effect on PTA.

Prosecution Takeaway: Replacement communications from the PTO will not count towards PTA when it is possible to discern the Office’s intent from the original communication.