Recently, the U.S. Court of Appeals for the Federal Circuit issued a ruling that discusses the analysis for patent term extension and patent term adjustment. Both PTE and PTA can lengthen the term of a patent, but they arise from two different statutes and are used for two different purposes. The court determined that they cannot be applied in the same way, either. 

In In re Cellect, the court determined that PTA and PTE, in an obviousness-type double patenting analysis, can not looked at as the same. Judge Lourie explained in writing that the ODP for a patent needed to be based on the expiration date of the patent after the PTA was added.

What Happened in In re Cellect?

In In re Cellect, Cellect, LLC appealed from four ex parte reexamination decisions. The four decisions affirmed that several claims in Cellect’s US patents were unpatentable. The claims focused on devices, such as personal digital assistant devices and phones, comprising image sensors.” Each of the patents subject to the reexamination decisions was granted a patent term adjustment (PTA) due to USPTO delays. 

Cellect appealed the decisions, finding that some of its claims were not patentable. In its arguments before the Patent Trial and Appeal Board (PTAB) and the Federal Circuit, Cellect relied on a previous ruling, Novartis AG v. Ezra Ventures LLC, which stated how ODP does not invalidate a Patent Term Extension that is valid. 

PTA vs PTE: The Court’s Response

PTA is typically granted when the USPTO’s processes result in a delay in patent processing. A patent term extension (PTE), by contrast, is typically granted when a regulatory review, not USPTO practices, causes the delay. 

PTE and PTA arise from two different statutes. USPTO’s argument was in agreement by the court; the two forms of time extension have different sources and purposes, even if they produce similar results from the perspective of the patent applicant.

Specifically, PTE is addressed in 35 U.S.C. 156. Based on the language of the statute and its prior rulings, the court found that “ODP for a patent that has received PTE should be applied based on the expiration date…before the PTE is added” if the patent itself is valid. 

PTA, by contrast, is addressed in 35 U.S.C. 154. There, the court held, “there is nothing in the PTA statute to suggest that application of ODP to the PTA-extended patent term” would contravene Congress’s intent in creating the statute. The court also noted that Cellect should have filed terminal disclaimers.

Other Challenges in In re Cellect

The Federal Circuit also found against Cellect on the other claims raised by Cellect’s appeal. The court noted that Cellect’s non-asserted claims were valid for the full patent term, including any patent term adjustment.

The court disagreed with Cellect’s final argument, as it found that Cellect never showed the examiner considered ODP and that, in fact, a lack of any terminal disclaimer requirement demonstrated that the examiner likely did not consider ODP. Cellect had placed itself in the position of trying to prove a negative, the court stated 一 a challenge Cellect could not and did not meet in this case. 

Patent litigation can quickly become complex. For help navigating your patent’s legal process, speak to an experienced Los Angeles patent lawyer today.