A Timely Yet Improper Reply After a Final Office Action Does Not Stop the Accrual of “Applicant Delay” for Purposes of Patent Term Adjustment

The patentee sought patent term adjustment (PTA) relying on a 37 C.F.R. § 1.116 amendment filed exactly three months after the final office action—the response deadline to avoid applicant delay in determining PTA. Although timely, this amendment argued the merits of examiner rejections after a final office action and was therefore not a proper “reply” under the Patent and Trademark Office (PTO) regulations. The patentee later filed another submission adopting all of the examiner’s outstanding rejections.

The PTO determined that the timely filed first submission was improper because it (1) failed to comply with PTO regulations and (2) was a “reply having an omission.” It concluded that the proper reply was the patentee’s second submission. Since the first submission was improper, the PTO refused a PTA based on it. On appeal, the district court granted summary judgment for the PTO.

The Federal Circuit affirmed under a Chevron review. It is permissible to view an applicant submission that continued to argue the merits of examiner rejections after the final office action as a failure to engage in reasonable efforts to conclude prosecution. Such submission does not prevent the accrual of “applicant delay” under the PTA statute. If improper replies were acceptable, applicants could avoid delay as long as any timely submission addressed all points of a final office action.