The Federal Circuit ruled on January 23, 2019, that the United States Patent and Trademark Office (“PTO”) erred in reducing the term of a patent owned by Supernus Pharmaceuticals by 546 days, during which time the company could not have furthered prosecution of the application. The Patent Term Adjustment (“PTA”) statute explains that the length of a patent term may be reduced by the number of days that an applicant fails to engage in reasonable efforts to conclude prosecution of an application. Thus, the PTO cannot subtract from a patent term any time during which an applicant is incapable of making reasonable efforts to conclude prosecution. The Court’s decision highlights the importance of recognizing whether a patent applicant is capable of making efforts to further the patenting process.
Rachel A. Rice
Dr. Rachel Rice applies her doctoral studies in biological sciences to focus her practice on patent prosecution and counseling in the areas of life sciences, biotechnology and pharmaceuticals. She has prior research experience in neurobiology and behavior, molecular biology and cancer biology. Dr. Rice received her J.D., cum laude, from the University of California, Irvine, where she served as president of the Student Bar Association More ›
James J. Mullen III
James combines his scientific experience with his legal training in his practice to craft commercially relevant solutions for his clients’ intellectual property challenges. He is the founder and head of MoFo’s Antibody Patent Group and leads the Patent Group in the San Diego office. As a patent prosecutor, James is well versed in obtaining focused patent protection that provides a commercial advantage in the marketplace. More ›