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IP Alert: USPTO Modifies Patent Term Adjustment Procedures Following Supernus

May 31, 2019

The USPTO has modified its patent term adjustment (PTA) procedures in view of the Federal Circuit’s January 2019 decision in Supernus Pharmaceuticals, Inc. v. Iancu. As detailed in the Federal Register notice published on May 9, "the USPTO will continue to make the patent term adjustment determinations indicated in patents under the existing regulations using information recorded in its PALM system." However, a patentee who holds there was no identifiable effort it could have taken to conclude prosecution of its application may make a timely request for reconsideration of the PTA, providing relevant information not recorded in the PALM system. The USPTO's decision on such a patentee’s request for reconsideration “will apply the Federal Circuit's decision in Supernus in view of the information presented by the patentee.”

As reported in our earlier alert here, in January the Federal Circuit overturned a USPTO decision reducing the number of days of PTA for a patent assigned to Supernus. Briefly, the Federal Circuit agreed with applicant Supernus that there was nothing Supernus could have done during a period of time from the filing of a request for continued examination until the filing of the information disclosure statement. As a result, Supernus received an additional 546 days of PTA (for the period from February 22, 2011, to August 21, 2012).

In a footnote in this recent Federal Register notice, the USPTO provides a reminder that the PTA reduction at issue in Supernus “can be avoided by the prompt submission of the information disclosure statement.”

For more information on the modified procedures, please contact Fitch Even partner Timothy R. Baumann, author of this alert.

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