One of the most confusing—and frustrating—aspects of
the USPTO's Patent Term Adjustment (PTA) rules is the mismatch
between the PTA rules and the Information Disclosure Statement
(IDS) rules. In
Gilead Sciences, Inc. v. Lee, the Federal Circuit upheld
one such mismatched PTA rule, but the court's opinion did not
address the inconsistency with the applicable IDS rule.
Stakeholders caught in the gaps between the PTA rules and the IDS
rules may be able to salvage some PTA under Supernus.
PTA-IDS Mismatches
In
Supernus v. Iancu, the Federal Circuit held that the USPTO
cannot charge a PTA deduction for "applicant delay"
during a period when the applicant "could have done nothing to
advance prosecution." Although the ruling is not limited to
IDS-based PTA deductions, the deduction at issue stemmed from an
IDS that was timely under the IDS rules but nonetheless incurred a
PTA deduction under the PTA rules.
