Mohsenzadeh v. Lee, No. 14-1499 (Fed. Cir. 2015)
Annotate this CaseUnder 35 U.S.C. 154, the PTO must extend a patent term if issue of an original patent is delayed due to the failure of the Patent and Trademark Office to provide notifications under section 132 or a notice of allowance not later than 14 months after the date of filing. Delay adjustment is statutorily reduced for delays attributable to unreasonable prosecution efforts. When an application has claims drawn to multiple inventions, the PTO may issue a restriction, requiring the applicant to prosecute only one of the inventions as part of that application. For remaining inventions, the applicant may file a divisional application, which has the benefit of the filing date of the original application. Mohsenzadeh filed the 905 application. Though the 14-month notification period ended in September 2002, the PTO notified Mohsenzadeh of a restriction requirement in September 2006. The claims Mohsenzadeh elected to prosecute issued in 2010 as the 984 patent. The PTO granted an adjustment of 2,104 days, including 1,476 days attributable to the time between when notice was due and when the PTO provided notice of the restriction. Mohsenzadeh filed divisional applications; patents issued in January 2013 and March 2013. Both claim priority to the 984 patent. The PTO granted no term adjustment. Mohsenzadeh argued that each was entitled to the 1,476 days. The Federal Circuit affirmed summary judgment in favor of the government. Section 154 requires a term adjustment for delays that occurred during prosecution of the actual application from which the patent directly issued, not the application from which it derived priority.
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