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ARTICLE · 02 FEBRUARY 2016

Pfizer v. Lee: A Patent Term Adjustment Double Standard?

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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In Pfizer v. Lee (No. 2015-1265, January 22, 2016), the Federal Circuit upheld the USPTO's determination that the toll period for A-type patent term adjustment delay stops upon the mailing of a deficient USPTO paper.

United StatesIntellectual Property
Christina Sperry
Christina Sperry
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In Pfizer v. Lee (No. 2015-1265, January 22, 2016), the Federal Circuit upheld the U.S. Patent and Trademark Office's (USPTO) determination that the toll period for A-type patent term adjustment (PTA) delay stops upon the mailing of a deficient USPTO paper. Conversely, by statute, an applicant's submission of a deficient paper to the USPTO does not stop the toll period for applicant delay that is subtracted from PTA accrued due to USPTO delay. Before further considering the Pfizer decision and its contrast with applicant delay, let's start with a reminder of PTA rules.

PTA Overview

35 U.S.C. § 154 provides for three types of USPTO delay in prosecution that entitle a patent to an extension of term beyond the standard term of the patent:

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