[00:00:01] Speaker 03: I'm going to wait for counsel to come up and tell me how to pronounce the name. [00:00:34] Speaker 03: Mr. Oaks, your name I get. [00:00:35] Speaker 03: Tell me the name of the case. [00:00:38] Speaker 00: I'm party for Hasein Mohsenzadeh. [00:00:41] Speaker 00: Mohsenzadeh? [00:00:42] Speaker 00: Is the way that he pronounced it. [00:00:43] Speaker 03: Mohsenzadeh. [00:00:43] Speaker 03: No, I want to pronounce it correctly. [00:00:46] Speaker 03: Mohsenzadeh 2014-1499 Mohsenzadeh versus Lee. [00:00:50] Speaker 03: Mr. Oaks, please proceed. [00:00:52] Speaker 00: May it please the court, Your Honor. [00:00:53] Speaker 00: Michael Oaks and with me is Jeff Ockhart for Mr. Mohsenzadeh. [00:00:57] Speaker 00: This is a straightforward case of statutory construction. [00:01:00] Speaker 00: As the court is aware, the starting point in every case of statutory construction is the language of the statute itself. [00:01:06] Speaker 00: And if the intent of Congress is clear, that is the beginning and the end of the matter. [00:01:09] Speaker 00: The court must give effect to the unambiguously expressed intent of Congress. [00:01:15] Speaker 00: When Congress enacted the patent term adjustment statute, Congress deliberately used broad, indefinite language to ensure that all original patents received enforceable terms [00:01:26] Speaker 00: that approximated the 17-year terms that were available to them prior to the signing of the GATT Treaty. [00:01:32] Speaker 00: Now, if we look at the language of 35 USC 154 B1A, it's under the heading, Guarantee of Prompt Patent and Trademark Office Responses. [00:01:42] Speaker 00: And the statute reads, [00:01:44] Speaker 00: If the issue of an ANN original patent is delayed due to the failure of the PTO to provide at least one of the notifications under Section 132, not later than 14 months after the date on which an application was filed under Section 111, the term of the patent shall be extended one day for each day after the period specified until the action described in such clause is taken. [00:02:10] Speaker 03: here there's no dispute between the parties that an original patented your argument that we should draw a distinction between and and thought that that's correct location yet you know how we do that i mean that's a pretty tenuous argument and in light of the fact that it was built in [00:02:31] Speaker 03: some degree of absurdity in that the patentee's own delay could not be used to offset the government's delay because in the patentee delay section it says the where this one says and so you'd end up being able to hold the government accountable for delay in a parent but not holding the applicant accountable for its own delays in that parent. [00:02:54] Speaker 00: under your interpretation of the and so it seems like it kind of turned what was the intent of congress it didn't happen i don't you get there to be and i i want to perfect on the inverse though there's a long body of case by the day that statuary construction [00:03:10] Speaker 00: It's been around for hundreds of years and is indefinite. [00:03:14] Speaker 00: It is to be given as broad as possible construction. [00:03:16] Speaker 00: It means one or more. [00:03:18] Speaker 03: This is your position, but so I want to let you because you haven't gotten to my answer my question yet, but so go ahead. [00:03:25] Speaker 00: There's a long body of case law. [00:03:26] Speaker 00: We cited it in our brief and means one or more. [00:03:29] Speaker 00: It is not limited to the one specific thing. [00:03:31] Speaker 00: the means, the specific thing that was previously referenced. [00:03:36] Speaker 00: District courts, federal courts, appeals courts around the country, when they see and they mean broadest possible meaning, they say that is not ambiguous. [00:03:43] Speaker 00: That is Congress giving an unambiguous intent that we are to be given the broadest possible meaning. [00:03:47] Speaker 00: And here the entire intent of the statute is to return patent term to patent owners. [00:03:52] Speaker 00: It's not to take it away, it's to return it. [00:03:54] Speaker 00: Here we've got unambiguous, we've got PTO delay of five years in issuing that first office action when they're required by statute to respond in 14 months. [00:04:03] Speaker 00: There's no way for a patentee to recover that four-year delay unless that term is restored. [00:04:08] Speaker 00: And this court held in the Wyeth case, the goal is to get all original patents about 17 years. [00:04:14] Speaker 00: Here, because of that delay, that patent's only got eight years of enforceable life. [00:04:17] Speaker 03: Yes, but going back to my point, the problem is that Congress [00:04:21] Speaker 03: also intended a patentee's delays to offset the government delay in terms of returning patent term adjustment. [00:04:28] Speaker 00: And the patentee's delays will be deleted out from, I mean, the restriction cuts off that A delay, right? [00:04:35] Speaker 00: Once that restriction requirement comes out in the parent case, that cuts off the A delay from the parent case. [00:04:40] Speaker 00: And then the patentee's actions within the divisional patent will be deducted out. [00:04:44] Speaker 03: Yes, but what if the patentee had actions in the parent prior to the restriction, [00:04:50] Speaker 03: which caused significant delays. [00:04:51] Speaker 03: I realize that's not true in this case, but you're asking for a statutory interpretation that will affect lots and lots of cases. [00:04:59] Speaker 03: So if the patentee did in fact delay in the parent in a way that would normally be used to offset... I don't think that's the case. [00:05:07] Speaker 00: A, I don't think it will affect a lot of cases because most of the time, almost every time, the patent office will get that restriction out in the first 14 months. [00:05:14] Speaker 00: It's a one-page office action. [00:05:16] Speaker 00: So all they do is they say, I mean, [00:05:18] Speaker 00: it said in our brief, but it's a one-page action. [00:05:20] Speaker 00: They say restrict your claims. [00:05:22] Speaker 00: You restrict them. [00:05:23] Speaker 00: That cuts off the potential for any of this delay. [00:05:26] Speaker 00: As soon as that restriction comes out, this is over. [00:05:28] Speaker 00: Because of that due to language, if the issuance is delayed due to the patent office delay, nothing else is going to be due to that patent office delay except for that restriction requirement. [00:05:38] Speaker 00: So once that restriction requirement comes out, it cuts off. [00:05:41] Speaker 03: Why just the restriction requirement? [00:05:42] Speaker 03: It's also basically any first office action [00:05:47] Speaker 03: need to come out in fourteen months right and so it's not just a restriction requirement. [00:05:51] Speaker 00: That's true. [00:05:51] Speaker 03: So any case regardless of whether it's a restriction case or not in which the PCO doesn't act and then there's a continuation application filed afterwards. [00:06:00] Speaker 03: I mean I feel like your [00:06:02] Speaker 03: suggestion that it's almost never going to happen isn't correct. [00:06:05] Speaker 03: It's almost never going to happen exactly like it happened in this case. [00:06:08] Speaker 00: Well, the patent office will typically get their first office action, whether it's a rejection, whether it's a restriction, out in that first 14 months. [00:06:14] Speaker 00: This is an unusual case where the patent office delayed for five years in getting that first office action. [00:06:20] Speaker 00: But that's the whole point of the patent term adjustment statute is to get that term back to the patent office because of the patent office delay. [00:06:25] Speaker 00: There's nothing that the patent owner can do during that period except wait for the patent office to get back to them. [00:06:33] Speaker 00: So it's not the job of this court to rewrite the statute. [00:06:36] Speaker 00: Congress gave express intent. [00:06:38] Speaker 00: They used the word and. [00:06:39] Speaker 00: This court does the same thing when it construes claim construction. [00:06:43] Speaker 00: It uses and is used to mean one or more. [00:06:45] Speaker 00: And this is sort of a silly example. [00:06:47] Speaker 00: If I had a basket of apples on the table and you said, hand me an apple, I would assume that any one of those would satisfy that request. [00:06:55] Speaker 00: But if you said, hand me the apple, I would say, which apple are you talking about? [00:06:59] Speaker 00: That's the entire meaning. [00:07:00] Speaker 00: It's the plain and ordinary meaning of the word and. [00:07:03] Speaker 00: The interesting thing is that when Congress was enacting this bill, the original version of the bill had the application in it and it actually excluded restriction requirements from a triggering event. [00:07:15] Speaker 00: Then Congress added in restriction requirements and they changed the to and. [00:07:20] Speaker 00: The plain intent is to broaden this so that we're covering all possible applications. [00:07:24] Speaker 00: The only real anomaly here is that divisional patents here have way shorter lives than the parent patents. [00:07:31] Speaker 00: That's not what was supposed to happen. [00:07:32] Speaker 00: If this happened pre-gap, all of these divisional patents would have 17-year terms. [00:07:37] Speaker 00: But now, because of the patent office delay, they've got an eight-year term where the parent expires way after the divisional that were filed three years later. [00:07:43] Speaker 03: So your argument in response to the government's ability to construe the word application, for example, if they were to say an application means only the application that matures into the patent. [00:07:59] Speaker 03: And the idea about whether we should give Chevron deference to that construction, your argument would be what? [00:08:05] Speaker 00: It's absolutely against the plain language of the statute. [00:08:08] Speaker 00: Congress deliberately chose Anne. [00:08:10] Speaker 00: They know what that means because of this long body of paper. [00:08:14] Speaker 00: Anne means one or more. [00:08:15] Speaker 00: And so in the Ringling case, one of the Ringling cases we cited, that is indefinite, use of an indefinite article by Congress is plain and unambiguous language by Congress that it can apply to one or more. [00:08:28] Speaker 00: It is a broadening definition. [00:08:29] Speaker 00: It's supposed to be given the broadest possible interpretation. [00:08:32] Speaker 01: Excuse me, you're putting a lot of weight on that one word. [00:08:36] Speaker 01: Go back to your apple. [00:08:39] Speaker 01: I know you're a hypo. [00:08:40] Speaker 01: If I ask you to get me an apple, wouldn't it be fair for you to say which one? [00:08:46] Speaker 00: I would think you didn't care because you just said hand me an apple. [00:08:50] Speaker 00: It's a basket of apples. [00:08:51] Speaker 01: I said that's a wrong one. [00:08:52] Speaker 00: You never did ask. [00:08:54] Speaker 00: Yeah, I would think you would ask me hand me the apple or hand me the red one. [00:08:57] Speaker 00: You're pointing to a specific one. [00:08:59] Speaker 01: There's a little bit of ambiguity in the word apple. [00:09:02] Speaker 00: I don't find any ambiguity whatsoever. [00:09:04] Speaker 00: It means one or more. [00:09:05] Speaker 00: Any application that the delay in that application causes the delay in the issuance. [00:09:11] Speaker 00: So it's not the universe because of that due to language in the statute. [00:09:15] Speaker 00: It's any application where the delay by the patent office causes delay in the issuance of an original patent, which we agree is a... Now, at the very outset, I guess you had also the option to follow separate applications for the different claims. [00:09:29] Speaker 01: That's true. [00:09:30] Speaker 01: You chose not to. [00:09:31] Speaker 00: That's true. [00:09:32] Speaker 01: And there's a risk in doing that. [00:09:34] Speaker 00: There shouldn't be a risk, because pre-gap there was no risk whatsoever. [00:09:37] Speaker 00: And the patent term adjustment fixes that risk by saying delays in any application will give rise to patent term adjustment. [00:09:45] Speaker 00: And so that would force you to take this incredible guess as to how the patent office is going to divide up your claims. [00:09:51] Speaker 00: It would require you to be perfect every time, or you'd lose patent terms. [00:09:55] Speaker 00: And that is exactly opposite of the express intent of the patent term adjustment statute. [00:10:00] Speaker 00: The entire goal of that statute, as this court found in the Weiss case, [00:10:03] Speaker 00: is to return all original patents to that approximately 17-year term. [00:10:08] Speaker 00: Not eight years. [00:10:09] Speaker 00: Eight years makes no sense. [00:10:10] Speaker 00: We're trying to get back to the pre-gad phase as close as we can when in light of patent office play. [00:10:16] Speaker 00: That's what we're looking at here. [00:10:17] Speaker 03: it's not eight years because of patent office delay. [00:10:22] Speaker 03: The patent office delay was less four years or more. [00:10:25] Speaker 00: Four years, that's right. [00:10:26] Speaker 00: It would never get to 17. [00:10:28] Speaker 03: So, I mean, the rest of that delay was actually your client not filing the divisional application in a timely fashion after the restriction requirement. [00:10:38] Speaker 03: Your client waited until prosecution of the parent was nearly [00:10:42] Speaker 03: completed before even then filing a divisional. [00:10:44] Speaker 03: He wanted to do them in series, not in parallel. [00:10:47] Speaker 03: So he himself caused a lot of the delay, which is what caused it to get to eight years. [00:10:52] Speaker 03: In fact, more of the delay than the Patent Office. [00:10:55] Speaker 00: That's true, and we're not seeking to recover that time. [00:10:57] Speaker 00: That's not covered by the Patent Term Adjustment Statute. [00:10:59] Speaker 00: What is covered by that? [00:11:00] Speaker 03: Why can't all of that delay be used to offset the Patent Office? [00:11:03] Speaker 00: This is a standard prosecution technique because [00:11:07] Speaker 03: He chose to file in series rather than in parallel. [00:11:11] Speaker 00: He's lost that life. [00:11:12] Speaker 00: He's not trying to recover that. [00:11:13] Speaker 00: That is counted against him. [00:11:14] Speaker 00: He's not getting that back. [00:11:15] Speaker 03: Yes, but unfortunately, I understand. [00:11:17] Speaker 03: Your response to me is a very good one. [00:11:21] Speaker 03: Judge Moore, if you did that, it would be like double counting his delay against him. [00:11:25] Speaker 03: But guess what? [00:11:26] Speaker 03: That's actually exactly what Congress did. [00:11:29] Speaker 03: I don't understand why. [00:11:30] Speaker 03: I think it's not good. [00:11:32] Speaker 03: But when they count the patentee's own delay that was caused, [00:11:37] Speaker 03: and allow it to offset the PTO delay, they are expressly in every instance double counting. [00:11:42] Speaker 03: Because if he caused delay in his own application, [00:11:45] Speaker 03: We're in a post-scat world. [00:11:47] Speaker 03: He loses some of his exclusivity time. [00:11:50] Speaker 03: He loses a portion of his patent term. [00:11:52] Speaker 03: And then when we double count it, which we have to do by the statute, against PTO delay to offset their delay, it's a double whammy for the patentee. [00:12:02] Speaker 03: I don't think that's fair, but that's what the language unequivocally requires in every single case. [00:12:07] Speaker 03: So your argument to me is a really good one, except that it is expressly what Congress enacted. [00:12:13] Speaker 00: Well, Congress said an application. [00:12:15] Speaker 00: They didn't say the application that gives rise to the patent. [00:12:18] Speaker 00: So delaying an application that causes the delay of the issuance of an original patent will give rise to patent term. [00:12:26] Speaker 03: Why won't the applicant's delay in filing the divisional be used to offset the PTO's delay in issuing the first 14-month action? [00:12:39] Speaker 00: I don't, there's nothing in the statute that would require that. [00:12:43] Speaker 03: No, the PTO is free to delineate. [00:12:46] Speaker 03: the circumstances in which an applicant's behavior. [00:12:49] Speaker 00: But they haven't done that. [00:12:50] Speaker 00: Instead, they've said that in the first instance, none of that time counts. [00:12:54] Speaker 00: But they weren't permitted to do that under the plain language of the statute. [00:12:57] Speaker 00: I mean, if filing a patent that was ultimately going to be restricted with some kind of bad act, then the parent patent wouldn't get that delay either in issuing the restriction. [00:13:06] Speaker 00: But they expressly, the patent officer agrees that the parent application still gets that delay period. [00:13:13] Speaker 03: Okay, let's save the rest of your rebuttal time and hear from the government. [00:13:29] Speaker 02: Both the statute and the regulations here make clear that PTA is only available if the application becomes a patent. [00:13:40] Speaker 02: We have a system in which one invention is described in one application that becomes one patent. [00:13:45] Speaker 02: Congress is a singular application because each patent comes from one application and that's the application you get PTA for. [00:13:54] Speaker 02: Continuation, divisionals, they complain the priority date that they are separate applications. [00:14:02] Speaker 02: have separate application numbers, separate fees, they're processed separately. [00:14:05] Speaker 02: You can grant one, deny the other. [00:14:07] Speaker 02: PTA is calculated separately. [00:14:10] Speaker 03: Yes, but here isn't he correct that it says N application was filed under 111. [00:14:17] Speaker 03: And here we do have N application in this chain in which the PTO did not respond 14 months after the filing. [00:14:25] Speaker 03: We have N application that was filed under 111A, the parents. [00:14:28] Speaker 03: PTO didn't respond for five years. [00:14:31] Speaker 03: Why isn't that good enough on its face? [00:14:34] Speaker 02: So in some sense it's certainly true that delay in a parent application to carry over to the child, but as the court has noted, that's not limited to divisionals. [00:14:42] Speaker 02: it would be true of any continuing application. [00:14:45] Speaker 02: And in fact, this court recently said in Gilead, delay in one application is going to delay everything else before the same examiner. [00:14:53] Speaker 02: So it's not even clear where that will end. [00:14:56] Speaker 02: I think the best reading of this is that Congress used an application, because it's talking about an application under Roman I, or an international application under Roman II. [00:15:07] Speaker 02: And they used the singular because they're [00:15:09] Speaker 02: preserving this one application, one invention, one patent system. [00:15:15] Speaker 02: As the course pointed out, we would get to very strange results where applicants could launder their delay. [00:15:22] Speaker 02: They could accumulate a bunch of [00:15:25] Speaker 02: That's PTA, but on the other hand... But this is a strange result. [00:15:28] Speaker 03: The PTO did cause him to lose four years of his patent term here by not acting. [00:15:34] Speaker 03: PTO received an application and did nothing for five years. [00:15:38] Speaker 03: That's a really long time. [00:15:40] Speaker 03: Why should any of the claims that he sought not be restored? [00:15:46] Speaker 02: Well, this is a situation that the applicant has control over, right? [00:15:49] Speaker 02: The applicant can file a broad application [00:15:52] Speaker 02: But there are trade-offs with doing that. [00:15:54] Speaker 02: That's a strategic choice. [00:15:56] Speaker 02: And you risk losing patent time when you do that. [00:16:01] Speaker 02: The rule that we're talking about here, the statutory interpretation, it's going to apply in every case. [00:16:08] Speaker 03: It's going to apply... You say risk losing patent term when you do that. [00:16:11] Speaker 03: You only risk losing patent term when you do that if the PTO delays five years. [00:16:15] Speaker 03: I mean, if the PTO would move forward promptly, then they could have filed their divisional the next day and they would have lost no time. [00:16:22] Speaker 03: Zero time would be lost. [00:16:23] Speaker 02: Well, restriction requirements by definition come into play in cases where you have an overly broad application that imposes a serious burden on the examiner. [00:16:35] Speaker 02: So we're talking about situations in which the applicant could have filed multiple inventions, because each invention is supposed to be in a separate application. [00:16:45] Speaker 02: That's what the statute says. [00:16:46] Speaker 02: And instead, they file a broad application. [00:16:49] Speaker 02: It takes a long time for the PTO to handle it. [00:16:52] Speaker 02: There are strategic reasons to file broad applications, but there are trade-offs with that choice. [00:16:58] Speaker 02: Now, the idea that the [00:17:03] Speaker 02: The divisional application should have as long a patent term as the original. [00:17:09] Speaker 02: The statute doesn't bear that out. [00:17:11] Speaker 02: The divisional is basically always going to be shorter because it's claiming that earlier priority date from the time when the earlier application was filed. [00:17:24] Speaker 03: So it's going to be shorter by virtue of them having to file a divisional, which introduces just a slight bit of delay in the process if they had done it promptly, immediately upon restriction. [00:17:35] Speaker 03: But it's not going to be shorter by five years. [00:17:37] Speaker 03: I mean, you all are responsible for the five-year delay. [00:17:42] Speaker 02: In some sense, that's true. [00:17:43] Speaker 03: If you look at time... In what sense is it not true that you're responsible for the five-year delay? [00:17:48] Speaker 02: He could have filed multiple applications. [00:17:50] Speaker 02: He could have put each invention in a separate application as the statute requires, and then he would have gotten, if it took five years, he would have gotten the five years [00:17:57] Speaker 02: on every application. [00:17:59] Speaker 02: But this is a system in which, not just in this particular case, and maybe these facts are sympathetic, but it would apply to every continuing application. [00:18:08] Speaker 02: And their reading of the language of the statute, it seems like it would also apply to other types of A and C delay. [00:18:13] Speaker 03: So we have a situation where... You rejected this PTA application, or the government did, citing primarily 1.70413, right? [00:18:22] Speaker 03: Yes. [00:18:25] Speaker 03: example 13, which says, further prosecution via a continuing application, in which case the period set forth in 1703 shall not include any period prior to the actual filing date of the application that results in the patent. [00:18:41] Speaker 03: Under what gap-filling authority did the PTO enact this regulation? [00:18:49] Speaker 02: As this court recently recognized in Gilead, we get Chevron deference for that statute. [00:18:54] Speaker 02: It's a very broad delegation. [00:18:56] Speaker 03: I'm not asking you to interpret it. [00:18:58] Speaker 03: That's what your Chevron deference. [00:19:00] Speaker 03: I said under what statutory section did you get gap-filling authority to create that substantive provision? [00:19:06] Speaker 02: So 154B2.3 gives the director of the authority to prescribe regulations establishing the circumstances [00:19:15] Speaker 02: So the director gets to define the circumstances that constitute a failure of the applicant to engage in reasonable efforts to continue processing or examination of the application. [00:19:25] Speaker 03: Okay, so you have the authority to establish circumstances. [00:19:32] Speaker 03: that constitute a failure of the applicant to move forward. [00:19:36] Speaker 03: Okay, and so what is the circumstance in 13 that constitutes the failure of the applicant to move forward? [00:19:43] Speaker 02: To conclude processing of the application. [00:19:45] Speaker 02: You're not engaged in anything to conclude processing of an application that you have not yet filed. [00:19:52] Speaker 02: This reading was completely uncontroversial at the time. [00:19:56] Speaker 03: No, no, no. [00:19:56] Speaker 03: You said to me your gap filling authority comes from [00:20:00] Speaker 03: the fact that you have the right to establish circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing an application. [00:20:14] Speaker 02: The prosecution of the application, that's the language in B2C-I, which sets out this sort of larger thing, and then Romans 3, [00:20:29] Speaker 03: I said, that's what I just read. [00:20:31] Speaker 03: Right. [00:20:31] Speaker 03: So what I don't understand, you have the authority to constitute a failure of circumstances. [00:20:39] Speaker 03: You can enumerate them as you did one through 12. [00:20:42] Speaker 03: when an applicant has failed to engage in reasonable efforts to conclude processing an examination of an application. [00:20:49] Speaker 03: You're saying when they file a continuation, they've done that, right? [00:20:53] Speaker 03: Isn't that what 13 says? [00:20:55] Speaker 03: When they file a continuation, they are failing to engage in reasonable efforts to process the examination. [00:21:02] Speaker 03: Yes. [00:21:02] Speaker 03: Okay. [00:21:04] Speaker 03: So that is a circumstance that you're entitled, absolutely gasoline authority to create. [00:21:09] Speaker 03: Now, what happens under this statute when you've identified a circumstance in which the applicant is failing to process the application? [00:21:19] Speaker 03: What does the statute require to happen? [00:21:23] Speaker 03: You don't get to decide. [00:21:24] Speaker 03: The PTO doesn't get to decide what happens, does it? [00:21:27] Speaker 03: Does the Congress give the PTO the authority to describe the circumstances and decide what penalties should attach for each of those circumstances? [00:21:35] Speaker 03: So did Congress give the PTO that authority? [00:21:38] Speaker 03: Generally, it shall be clear. [00:21:40] Speaker 03: Did Congress give the PTO the authority to both describe the circumstances and describe what penalties should assess based on those circumstances? [00:21:49] Speaker 02: So I want to separate yes or no. [00:21:52] Speaker 02: Not under 154B2C, Romans 3. [00:21:58] Speaker 02: There is another rulemaking authority here. [00:22:00] Speaker 03: So hold on. [00:22:00] Speaker 03: So Congress did not give the PTO the authority to decide [00:22:04] Speaker 03: what penalty should attach and in fact it expressly said what penalty should attach did it not in 154 c roman i right yes or no yes and the time shall be reduced reduced but so congress didn't say you can decide what penalty [00:22:22] Speaker 03: It says you can decide what circumstances give rise to a penalty and here, in fact, is clearly what the penalty will be. [00:22:28] Speaker 03: You will reduce the number of days, correct? [00:22:31] Speaker 02: That's right. [00:22:31] Speaker 02: Now, this provision is framed a little bit differently because the statutory text and our other regulations, 1702 and 703, which also get deference, [00:22:42] Speaker 03: Provide that this doesn't count at all and PTO made clear and we're going to get the authority to decide that it doesn't count at all when Congress has expressly said It will cause a reduction in the period of PTO delay. [00:22:57] Speaker 03: Where did you get the authority to say? [00:22:59] Speaker 03: No, no won't just cause a reduction. [00:23:01] Speaker 03: It will eliminate all PTO so [00:23:04] Speaker 02: The larger statutory scheme provides that it isn't going to count at all. [00:23:09] Speaker 02: 1.702 and 703 provide that it isn't going to count at all. [00:23:14] Speaker 02: This is a belt and suspenders [00:23:16] Speaker 02: The comments at the time said, everybody knows this doesn't count at all. [00:23:21] Speaker 02: And PCS said, yes, we're just putting this in here to remind applicants. [00:23:25] Speaker 03: Yes, so you don't get to put into regulation things that aren't something you have authority to do via gap filling. [00:23:33] Speaker 03: And I'm not suggesting that you don't have authority for 1.702 or 1.703 under the guise of we are interpreting the word application and are entitled to Chevron deference to do so. [00:23:44] Speaker 03: But that's not what you argued at any point in your brief. [00:23:47] Speaker 03: What you argued to me in your brief is that your authority for number 13 came from your gas filling authority on 154C3 little i. That's what you argued in your brief and that's what you've argued to me just now. [00:24:00] Speaker 03: And I think it was pretty clearly established that it didn't. [00:24:04] Speaker 03: that you don't have the gap-filling authority to assess the penalty, you only have the gap-filling authority from a substantive standpoint to define the circumstances that give rise, not what should happen in those circumstances. [00:24:17] Speaker 02: So I respectfully disagree on both counts, Your Honor. [00:24:20] Speaker 02: Our brief did also talk about 1.702 and 1.703 and the statutory scheme generally. [00:24:26] Speaker 02: Additionally, so we're not defining the penalty, but we are saying what time is the applicant delayed, right? [00:24:33] Speaker 02: When is the applicant failing to engage in reasonable efforts? [00:24:36] Speaker 02: And the answer to that is any time he hasn't yet filed the application, he is not engaged in reasonable efforts to complete processing of that application. [00:24:44] Speaker 02: So all of that time is time when he is not engaged in reasonable efforts to complete processing, and all of that time comes out. [00:24:54] Speaker 02: That is completely consistent with the statutory grant. [00:25:01] Speaker 02: It's also, of course, consistent with the statute and the use of singular and application, and avoids the very strange results that we would otherwise get. [00:25:13] Speaker 02: If there are no further questions? [00:25:19] Speaker 03: Okay. [00:25:19] Speaker 03: Thank you, Mr. Oaks. [00:25:29] Speaker 00: Thank you, Your Honor. [00:25:29] Speaker 00: I think you've hit on the key point, and that is this isn't just a little bit different than the other regulations within 1704. [00:25:38] Speaker 00: It's completely different because it just takes away PTO in the first instance, and Congress did not grant the authority to that. [00:25:43] Speaker 00: The statute is clear. [00:25:45] Speaker 00: You look at the plain language of the statute, delay in application gives rise to term adjustment for original patents, including divisionals. [00:25:53] Speaker 00: Nothing in the statute indicates any intent to treat divisionals differently. [00:25:58] Speaker 00: from parent patent applications. [00:26:00] Speaker 00: They used the broad language, and that broad language was intentional. [00:26:04] Speaker 00: If you took this to the extreme, if the patent office delayed 13 years instead of five years, these patents would have come out with zero years of life. [00:26:12] Speaker 00: And there is no recourse for patent holders. [00:26:14] Speaker 00: That can't be what Congress intended. [00:26:17] Speaker 00: Congress meant to fix the problems of patent office delay. [00:26:20] Speaker 00: The patent office can't just sit on an application indefinitely with no repercussions and with no recourse for patent owners. [00:26:27] Speaker 00: The entire intent of the patent term is up in statute with the return term to patent owners for patent on this delay. [00:26:35] Speaker 00: This is not a patent. [00:26:36] Speaker 01: When I look at the portion of the PTA statute that relates to the A delays, it says that the guarantee of a prompt patent in the trade response goes on with references to an original patent. [00:26:51] Speaker 00: Correct. [00:26:52] Speaker 01: Okay, what is that talking about? [00:26:54] Speaker 00: So, an original patent, and it's in a footnote of the government's brief as well, and they agree with us here, an original patent is a parent patent, a divisional patent, or a continuation patent. [00:27:06] Speaker 00: An original? [00:27:07] Speaker 00: An original. [00:27:07] Speaker 00: All three of those qualify as an original patent. [00:27:10] Speaker 00: The one thing that does not qualify as an original patent is a reissue patent. [00:27:14] Speaker 00: That's not an original patent. [00:27:15] Speaker 00: That comes out of the patent office a second time. [00:27:17] Speaker 00: But an original patent includes the visit. [00:27:19] Speaker 01: So if we read that and include all three, that doesn't affect later on the definition of the word and. [00:27:26] Speaker 01: You want us to restrict that to just a particular application? [00:27:30] Speaker 00: I'm sorry, which use of and? [00:27:33] Speaker 00: Where the statute goes on. [00:27:35] Speaker 01: So the date on which it's at. [00:27:36] Speaker 00: And application. [00:27:37] Speaker 00: No, any application. [00:27:38] Speaker 00: Any application where the delay in that application in issuing a restriction [00:27:43] Speaker 00: delays the issuance of the original patent that we talked about earlier, and it's open ended. [00:27:49] Speaker 01: So if you have a situation where you file an application and that results in a, in divisional applications and later on in continuation and part applications, are you saying all of those are original applications? [00:28:05] Speaker 00: No, no. [00:28:08] Speaker 00: Because the due to language, the due to language is the limiting factor here. [00:28:12] Speaker 00: So the Patent Office delay, the due to language is what restricts it. [00:28:16] Speaker 00: The due to would carry over to that divisional, but it's not going to carry over to a continuation in part off of that divisional. [00:28:23] Speaker 00: Because that would not be delayed due to the act of the Patent Office. [00:28:28] Speaker 03: Okay, thank you Mr. Oaks. [00:28:30] Speaker 03: The case is taken under submission.