No Patent Term Adjustment for Child Applications Based on Prosecution Delay in Parent Application

Author: James D. Stein
Editor: Kevin D. Rodkey

In Mohsenzadeh v. Lee, No. 14-1499 (Fed Cir. June 25, 2015), the Federal Circuit affirmed the district court’s order in favor of the USPTO that patent term adjustment for a divisional patent application is not extended for delays during prosecution of the related parent application.

35 U.S.C. § 154(b)(1)(A), which governs patent term adjustments, states that “if the issue of an original patent is delayed . . . the term of the patent shall be extended[.]” According to the Court, this language plainly means that Congress intended delays during prosecution of an application to be restored only to the patent “issuing directly from that application,” not to its later-filed continuing applications. The Court reasoned that if Congress intended for delays to be added to continuing applications, it would have said so expressly. Noting that Congress also passed on an opportunity to amend to statute to include continuing applications, the Court concluded that “Congress did not intend for delays in parent applications to result in patent term adjustments in continuing applications.”

 

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