Federal Circuit Corrects USPTO on Reasonable Efforts When Calculating Patent Term Adjustment

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.

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