C-Delay is Unavailable When an Examiner Reopens Prosecution In Response to an Appeal

Maria A. DeCicco RePass

In Chudik, the Federal Circuit held that under the Patent Office’s assessment of patent term adjustment accrued during Patent Office appeals, interferences, or secrecy orders, termed C-delay, is unavailable when an Examiner reopens prosecution in response to an appeal. The accrual of C-delay requires a decision by the PTAB or a court “reversing an adverse determination of patentability.”

During prosecution of Dr. Chudik’s patent directed to a guide for shoulder surgery, when the PTO issued a second rejection of all the pending claims, Dr. Chudik filed a request for continued examination rather than immediately appealing the decision to the Patent Trial and Appeal Board. Following another rejection of the claims by the Examiner, Dr. Chudik appealed the decision to the Board. Instead of filing an answer, the Examiner reopened prosecution and rejected the claims on a different ground. Dr. Chudik then appealed to the Board; however, the Examiner reopened prosecution again. Dr. Chudik continued to appeal the Examiner’s rejections, and the Examiner reopened prosecution three additional times before the claims were finally allowed. The patent issued with 1,967 days of PTA, as assessed by the Patent Office.

Dr. Chudik petitioned the PTO for 754 additional days of PTA in the form of C-delay. C-delay is a form of PTA that accrues for each day that a patent application is subject to appellate review by the Board or a federal court, where the review results in a decision reversing a rejection and causing the patent to issue. The PTO denied the petition on the basis that C-delay was not available because there was no Board decision.

Dr. Chudik appealed to the district court, arguing that C-delay should still accrue because the decision by the Examiner to reopen prosecution amounted to a decision reversing a rejection. The District Court rejected this challenge on the basis that the PTO’s interpretation of section 154 of the Patent Act, which was adopted through regulation and was reasonable, was entitled to Chevron deference. Dr. Chudik then appealed to the Federal Circuit.

The Federal Circuit affirmed, finding that the statute was most naturally read to require a decision by the PTAB or a court reversing an Examiner’s adverse ruling of patentability, and not the Examiner’s reconsideration of their own decision, as proposed by Dr. Chudik. The court reasoned that the statutory text and the Patent Act support an ordinary-usage distinction.

Despite the unavailability of C-delay, the Court further noted that B-delay may increase in situations where an Examiner reopens prosecution after a Notice of Appeal is filed. However, such adjustment is unavailable when the patent applicant has filed a Request for Continued Examination, which results in a pause of accrual of B-delay for the applicant until a notice of allowance is received.

Key Takeaways: The accrual of C-delay requires a decision by the PTAB or a court reversing an Examiner’s adverse ruling of patentability and is unavailable when an Examiner reopens prosecution in lieu of filing an answer. Further, patent applicants should consider the potential PTA implications when filing an RCE versus a notice of appeal in response to a final office action, as time spent on continued examination is ineligible for B-delay.