Patent Office Awards Patent Term Adjustment Based on Delay Related to a Vacated Office Action

Meunier Carlin & Curfman client Oncolytics Biotech Inc. of Calgary, Alberta, Canada, the assignee of US Patent No. 7,803,385 directed to a modified reovirus for the treatment of cancer, finally received a Certificate of Correction from the US Patent and Trademark Office (USPTO) showing 122 days of patent term adjustment, a patent term adjustment originally and repeatedly denied by the USPTO.

Oncolytics received a deficient office action, which was later vacated by the USPTO. However, when the USPTO calculated the patent term adjustment, it considered the deficient, vacated action to satisfy the USPTO’s obligation to respond within four months, thereby tolling the patent term adjustment. Oncolytics filed multiple petitions for correction with the USPTO and even filed suit (Oncolytics v. Kappos, Case No. 1:11-cv-00621, D.D.C.) to address the error.

In a decision signed by Robert Bahr and invoking supervisory authority, the USPTO granted the 122 days of patent term adjustment based on the date of the office action replacing the vacated office action rather than on the date of the vacated office action itself. The decision stated that the facts of the case “constitutue[d] the rare occurrence in which it is appropriate for the USPTO to treat an [o]ffice action issued in an application as a non-event for the purposes of calculating USPTO delay.“

Although the decision seeks to narrow its applicability by noting that the use of the term “vacate” will not necessarily entitle a patentee to patent term adjustment, the decision should prove useful in similar situations where office actions are vacated by the Office and patentees are entitled to patent term adjustment.