Patent term adjustment went beyond the period during which the applicant failed to undertake reasonable efforts

SUPERNUS PHARMACEUTICALS, INC v. IANCU

A plain reading of the statute shows that Congress imposed two limitations on the amount of time that the USPTO can use as applicant delay for purposes of reducing PTA. First, the statute expressly requires that any reduction to PTA be equal to the period of time during which an applicant fails to engage in reasonable efforts. Second, the statute expressly ties reduction of the PTA to the specific time period during which the applicant failed to engage in reasonable efforts.

The PTA statute requires that any PTA reduction be equal to the period of time during which an applicant fails to engage in reasonable efforts. The word “equal” is widely understood to mean “the same in amount, number, or size.” E.g., Equal, Cambridge Dictionary of American English 287 (2000). Stated differently, PTA reduction cannot exceed the period of time during which an applicant failed to engage in reasonable efforts. Thus, if there is no period of time during which the applicant could have but failed to engage in reasonable efforts, there can be no reduction to the PTA.





http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1357.Opinion.1-23-2019.pdf