938 F.3d 1343
Fed. Cir.2019Background
- Mayo filed U.S. Application No. 12/421,310 (effective filing date Nov. 30, 1999); Mayo filed an RCE on Sept. 14, 2011.
- An interference with U.S. Patent 7,635,757 was declared Feb. 9, 2012 and the Board awarded priority to Mayo on Feb. 19, 2014; the interference decision became final Apr. 23, 2014.
- After remand the examiner conducted a new prior-art search and issued a double-patenting rejection (June 30, 2014); Mayo responded and the examiner mailed a Notice of Allowance on Nov. 3, 2014; the patent issued Mar. 17, 2015.
- PTO applied 37 C.F.R. § 1.703(b)(1) to treat RCE time as running from the RCE filing date through mailing of the Notice of Allowance, thereby excluding that period from B Delay and reducing Mayo’s PTA; Mayo disagreed and sought redetermination.
- The district court affirmed the PTO; the Federal Circuit majority affirmed, holding that time from termination of the interference to mailing of the Notice of Allowance is RCE time (excluded from B Delay). Judge Newman dissented, arguing post‑interference examination is PTO‑caused delay and should count toward PTA.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the period from termination of the interference to mailing of the Notice of Allowance is "time consumed by continued examination...requested by the applicant under §132(b)" (i.e., RCE time excluded from B Delay) | Mayo: RCE time ends when claims are "deemed allowable" (interference declaration shows allowability) and the post‑interference reopening was not requested by Mayo, so that period is PTO‑attributable and should count for PTA | PTO: An RCE entitles the applicant to continued examination through mailing of the Notice of Allowance; examiner may reopen examination and issue new rejections; RCE time runs to Notice of Allowance per 37 C.F.R. §1.703(b)(1) | Affirmed PTO: the post‑interference period counts as RCE time (excluded from B Delay), so Mayo had no B Delay |
| Whether Novartis AG v. Lee supports Mayo’s narrower reading that "deemed allowable" (or interference declaration) ends continued examination | Mayo: Novartis means continued examination ends when claims are deemed allowable; interference declaration is equivalent to that event | PTO: Novartis addressed allowance→issuance interval and the presumption that examination ends at mailing of the Notice of Allowance absent reopening; it does not make interference declaration equivalent to allowance | Court: Rejected Mayo’s reading of Novartis; continued examination here did not end until Notice of Allowance and Novartis does not convert an interference declaration into allowance |
Key Cases Cited
- Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014) (allowance‑to‑issuance time is not RCE time absent resumption of examination)
- SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (agencies must follow unambiguous statutory text)
- Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010) (no deference to agency interpretations contrary to plain statutory language)
- In re Brandt, 886 F.3d 1171 (Fed. Cir. 2018) (RCE triggers repeated examination cycles)
- Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019) (overview of PTA framework and §154(b)(2) limitations)