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Supernus: Delays Out of the Applicant’s Hands Are Not Applicant Delays


The term of a U.S. patent is typically twenty years.  However, the patent term can be altered as a result of certain Patent Office delays (patent term adjustment) and certain regulatory delays (patent term extensions).  For the former, the Patent Office will adjust the term on a day‑for‑day basis: one day of delay results in one day of adjustment.  That said, the Patent Office has historically reduced any such adjustment if the patent applicant was the cause of the delay.  But when is delay attributable to the applicant?  The Federal Circuit recently addressed this issue in Supernus.  Because the case turned on dates, a timeline follows:

  • February 22, 2011: Supernus submits a Request for Continued Examination (RCE)
  • August 21, 2012:  The European Patent Office (EPO) notifies Supernus of an opposition in the corresponding European case, including the citation of undisclosed references
  • November 29, 2012: Supernus submits an Information Disclosure Statement (IDS) disclosing the references and the opposition papers

The Patent Office reduced the patent term adjustment of Supernus’s patent on account of the delay between the submission of the RCE and the submission of the IDS, some 646 days.  On appeal, Supernus argued that there were no efforts it could have taken in the period of time between the submission of the IDS and the EPO’s notification, some 546 days, and the Federal Circuit agreed.  While the decision is a dry exercise in statutory interpretation, it is now clear that delays out of the applicant’s hands are not necessarily “applicant delay.”

For some patents, alteration of the patent term by even a single day can be of huge economic significance.  Because the deadlines for challenging patent term adjustment determinations fall shortly after the date of patent issuance, patentees would be well advised to check recent patent term adjustments carefully.

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