Saturday, September 21, 2019

Judge Newman's dissent in Mayo Foundation: ‘no deference is due to agency interpretations at odds with the plain language of the statute itself.’

The dissent of Judge Newman:

This appeal concerns calculation of the patent term adjustment (“PTA”) that is established
by statute to compensate for the patent life consumed by prolonged (over three
years) examination of the patent application. The aspect
on appeal relates to the period of ex parte examination conducted after termination of an interference and ending
with mailing of the notice of allowance. The district court,
affirming the United States Patent and Trademark Office
(“PTO”), held that this additional period of examination is
not subject to any term adjustment,1 and my colleagues
agree. This holding does not comport with the statutory
provisions and precedent, and is contrary to the purpose of
term adjustment. Mayo is correct that the calculation of
PTA includes the period of examination after termination
of the interference.
The panel majority holds that this post-interference examination period is
not included in the patent term adjustment, although it plainly is examination delay due to PTO
procedures. I respectfully dissent.

Of interest:

The PTO argues that this court should defer to the
PTO’s calculation of term adjustment. However, “it is elementary
that ‘no deference is due to agency interpretations
at odds with the plain language of the statute itself.’” Wyeth v. Kappos, 591 F.3d 1364,
1372 (Fed. Cir. 2010) (quoting
Smith v. City of Jackson, 544 U.S. 228, 267 (2005)). 37
C.F.R. § 1.703(b)(1) requires that the delay in examination
be requested by the applicant. “Where a statute’s language
carries a plain meaning, the duty of an administrative
agency is to follow its commands as written, not to supplant
those commands with others it may prefer.” SAS Inst., Inc.
v. Iancu, 138 S. Ct. 1348, 1355 (2018).


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