[00:00:00] Speaker 04:
Next case is Actilian Pharmaceuticals versus PTO, 2017-1238, Mr. Hoxie.

[00:00:20] Speaker 01:
You get the deal with four days, right?

[00:00:23] Speaker 01:
This is four or five days, actually, Your Honor.

[00:00:26] Speaker 01:
Yes, Your Honor.

[00:00:29] Speaker 01:
Thank you.

[00:00:29] Speaker 01:
You may please report.

[00:00:32] Speaker 01:
This case involves, as you know, the Patent Term Adjustment Act, which is a patent term adjustment statute, which is very important to pharmaceutical companies, even if it's four days or even one day.

[00:00:46] Speaker 01:
And in the applying the patent term.

[00:00:49] Speaker 02:
Let me ask you a little housekeeping question.

[00:00:51] Speaker 02:
In the red brief in a footnote, the PTO says,

[00:00:57] Speaker 02:
The district court actually addressed the merits of the issue and erred in analyzing the claim in terms of standing.

[00:01:06] Speaker 02:
Do you agree with that?

[00:01:07] Speaker 02:
And if you do, does it matter?

[00:01:09] Speaker 01:
Are we requiring it?

[00:01:11] Speaker 01:
I agree that the district court erred.

[00:01:13] Speaker 01:
The district court was trying, I think, to avoid addressing the propriety of the PTO rule.

[00:01:20] Speaker 01:
So by saying that it didn't matter which way, which law applied,

[00:01:25] Speaker 01:
then he didn't have to reach the question.

[00:01:28] Speaker 01:
Do you say harmless error, or do we need to send it back?

[00:01:32] Speaker 01:
I think it's not harmless error because the district court was wrong.

[00:01:39] Speaker 01:
In fact, it did make a difference which statutory regime applied.

[00:01:44] Speaker 03:
I think you're misunderstanding the question.

[00:01:48] Speaker 03:
So the PTO doesn't say that the district court erred because it

[00:01:54] Speaker 03:
because it should have reached the retroactivity question, they're saying it aired just by characterizing it as a standing question rather than essentially a 12b6 question.

[00:02:04] Speaker 03:
So if we concluded that the district court was factually correct, that the two standards are the same, would we still have to send it back for him to consider it under a 12b6 standard versus 12b1?

[00:02:21] Speaker 01:
I think, first of all, the standing issue doesn't address the holiday weekend error issue.

[00:02:27] Speaker 01:
And while, of course, I'd be happy for you to send it back, I would have to agree that it would be better for practitioners and better for my client if the court simply reached the merits.

[00:02:40] Speaker 03:
So we would have to decide.

[00:02:44] Speaker 03:
We could decide either way.

[00:02:45] Speaker 03:
in connection with the harmless error analysis, whether or not the district court was correct that the two standards are the same, both pre and post-AIA?

[00:02:53] Speaker 01:
Yes, Your Honor.

[00:02:54] Speaker 01:
I think this is a matter of statutory construction.

[00:02:57] Speaker 01:
And I think it's the job of this court to say what the law is.

[00:03:03] Speaker 01:
And everyone would be best served if the court would make a determination.

[00:03:08] Speaker 01:
And if the district court got it wrong or the district court characterized it as standing,

[00:03:12] Speaker 01:
rather than something else.

[00:03:14] Speaker 01:
I think it's within this Court's purview to interpret the statute as it ought to be interpreted.

[00:03:22] Speaker 01:
I think in interpreting the statute, what's important to keep in mind is that the patent term adjustment is not a performance management tool for the PTO.

[00:03:33] Speaker 01:
It's a remedial statute designed to compensate applicants for any delays in prosecution, except for delays

[00:03:42] Speaker 01:
caused by the applicant's failures to engage in reasonable efforts to conclude prosecution.

[00:03:49] Speaker 01:
And in this case, everyone agrees that there was no applicant delay.

[00:03:59] Speaker 01:
So if you look at the PTO's calculations, initial calculations which were set out in the appendix at page 197, it specifies there's no applicant delay.

[00:04:11] Speaker 02:
Let me do another cleanup question at this point then.

[00:04:15] Speaker 02:
You argue, of course, that there was a miscalculation on the patent term adjustment and that it constitutes a taking as a result.

[00:04:29] Speaker 02:
If we agree with the PTO that it properly calculated PTA, does that moot your takings argument?

[00:04:38] Speaker 01:
Well, I think the

[00:04:41] Speaker 01:
If you agree with the PTO that the statute was compliant with, that's correct.

[00:04:51] Speaker 01:
But I think the context here is that I think we've heard a lot that this is not.

[00:04:59] Speaker 01:
I think the PTO's argument that the patent term adjustment or patent term itself

[00:05:08] Speaker 01:
is not a matter, is not a property interest, not something which needs to be addressed in light of due process and Fifth Amendment, with a due process Fifth Amendment background.

[00:05:22] Speaker 01:
I think that influences the standard and the degree of discretion which reasonably ought to be accorded to the PTO.

[00:05:34] Speaker 01:
I think in this case, it's important to understand that the patent term adjustment is not some kind of a gift from the PTO.

[00:05:43] Speaker 01:
It's not a discretionary bonus.

[00:05:46] Speaker 01:
It's a formula which Congress has laid out to compensate applicants for delays in prosecution.

[00:05:56] Speaker 01:
And while it's a complicated formula, its application is not discretionary.

[00:06:01] Speaker 02:
In the red brief, the PTO

[00:06:04] Speaker 02:
points out your firm has previously included exactly similar language in non-PCT patent applications, requesting, quote, early examination and allowance of ellipsis claims.

[00:06:21] Speaker 02:
Based on those previous requests, why should this statement be enough to put the PTO on notice that you were making an express request for a national stage commitment by itself, given that they

[00:06:34] Speaker 01:
Your Honor, the issue here is not whether it was reasonable for the PTO to read the boilerplate and preliminary amendment, or whether it was reasonable for the PTO to take the holiday weekend before starting an examination of the case.

[00:06:57] Speaker 02:
Well, it's not a question of reasonable.

[00:07:02] Speaker 02:
It's a question within the rules.

[00:07:05] Speaker 01:
No, Your Honor.

[00:07:07] Speaker 01:
First of all, that was not the rule that was in effect at the time that the application was filed.

[00:07:16] Speaker 01:
Secondly, the only reason for taking patent term away from a patent applicant is if it's shown that the applicant failed to engage in reasonable efforts to conclude prosecution.

[00:07:31] Speaker 01:
Here, I don't see how that can be seen as a failure.

[00:07:35] Speaker 01:
failure to take advantage of an optional procedure, which had no impact on patent term under the earlier version of the statute, which mentions only completion of the requirements under 371 and does not mention commencement of the national phase.

[00:07:55] Speaker 01:
But why are the time limits in 371B and F not requirements, in your view?

[00:07:59] Speaker 01:
Well, the time limits in 371B and F

[00:08:03] Speaker 01:
F is not a requirement, because it's an optional procedure.

[00:08:08] Speaker 01:
You're not required to request early examination.

[00:08:13] Speaker 01:
And B is not a requirement.

[00:08:15] Speaker 01:
It's a deadline.

[00:08:16] Speaker 01:
It says to the prosecution, it's at the national phase, shall commence no later than 30 months.

[00:08:24] Speaker 04:
Aren't we ignoring the elephant in the room here, box three, that was left unchecked?

[00:08:30] Speaker 01:
Well, Your Honor, as I mentioned,

[00:08:33] Speaker 01:
The box three, so the early commencement of the national phase that was left unchecked, that box was not relevant to patent term adjustment at the time this application was formed.

[00:08:49] Speaker 02:
As an experienced practitioner, are you aware of any other method by which an applicant has successfully made an express request?

[00:08:59] Speaker 01:
Well, an applicant could make an express request

[00:09:03] Speaker 01:
at any time, you could just file a piece of paper.

[00:09:06] Speaker 01:
We could have filed, let's say, a piece of paper.

[00:09:08] Speaker 01:
We filed this case on Thursday.

[00:09:10] Speaker 01:
We could have filed a piece of paper on Friday that said, express request, highlight, you know, bold stuff.

[00:09:18] Speaker 02:
I asked you a specific question.

[00:09:21] Speaker 02:
As an experienced practitioner, are you aware of an example where an applicant has made an express request without a box three check?

[00:09:33] Speaker 01:
I don't know offhand of a case like that, but I don't know of a case where it's been denied on that ground either.

[00:09:41] Speaker 01:
Generally, the PTO makes it very clear in the language in the NPEP and in their own regulations that their forms are advisory.

[00:09:51] Speaker 01:
They're not mandatory.

[00:09:54] Speaker 01:
They're not rules.

[00:09:55] Speaker 01:
They're not subject to notice of comment.

[00:09:56] Speaker 03:
Right.

[00:09:56] Speaker 03:
But even if they're not mandatory, even if the form didn't have to be checked, you still had to have something to make an express request, right?

[00:10:06] Speaker 03:
Yes.

[00:10:06] Speaker 03:
And that didn't come till later, right?

[00:10:07] Speaker 01:
Well, Your Honor, we didn't.

[00:10:10] Speaker 01:
The express request, as I think we've said, was not commencement of national stage was not the standard for starting with 14 months.

[00:10:22] Speaker 01:
at the time the application was filed.

[00:10:25] Speaker 01:
Commencement of the national stage became the standard a year later when the AIATCA provisions were implemented.

[00:10:35] Speaker 01:
At the time, it was simply the requirements.

[00:10:39] Speaker 01:
And the requirements of 371 are the requirements in 371C.

[00:10:46] Speaker 01:
And that's why you will see in every paper

[00:10:49] Speaker 01:
that was filed in the filing receipt and in every paper thereafter.

[00:10:53] Speaker 01:
The date is January 12, 2012, not January 13, 2000, or not January 16, 2012, or 17, 2012, which was the date they ultimately accorded.

[00:11:10] Speaker 01:
So the 371C date is an important date.

[00:11:15] Speaker 01:
That's the date that applicants

[00:11:17] Speaker 01:
are required to put in the caption of their case all along, because that's the date when prosecution starts.

[00:11:23] Speaker 01:
It's that 371C date.

[00:11:25] Speaker 01:
And that was the situation.

[00:11:28] Speaker 01:
A national phase commencement as the start of prosecution only became the standard a year later in 2013 for calculating PTA.

[00:11:39] Speaker 01:
So that's that.

[00:11:42] Speaker 01:
This is just a case where the applicant sort of did everything it was required to do to enter the national stage on a Thursday.

[00:11:49] Speaker 01:
And the PTO found for various reasons that it could have been done as late as Tuesday.

[00:11:57] Speaker 01:
And then it said, well, if it could have been done Tuesday, we're going to take it that it was done Tuesday.

[00:12:03] Speaker 04:
Mr. Hoxie, you're into your bottle time.

[00:12:05] Speaker 04:
You can continue or save it.

[00:12:07] Speaker 01:
Let me just say briefly that

[00:12:11] Speaker 01:
None of the period to commence we haven't addressed the weekend holiday exception, but that is not impacted by the start of the national phase or the express request.

[00:12:27] Speaker 01:
And I'll reserve the balance of my time.

[00:12:30] Speaker 04:
Ms.

[00:12:31] Speaker 04:
Kerr, is it?

[00:12:32] Speaker 00:
It's Kerr-Svahn, Your Honor.

[00:12:33] Speaker 04:
Kerr-Svahn.

[00:12:36] Speaker 00:
May it please the Court, I'm Dana Kerr-Svahn for the Director

[00:12:39] Speaker 00:
PTO cannot consider an application before the time in the treaty has expired unless it gets an express request.

[00:12:49] Speaker 00:
It's not hard to make an express request.

[00:12:52] Speaker 00:
That's just box three of 23 on a three-page form submitted by council.

[00:12:58] Speaker 00:
They didn't do that here.

[00:12:59] Speaker 02:
Let me ask you the same question I asked your friend.

[00:13:02] Speaker 02:
Are you aware of, as a matter of practice,

[00:13:06] Speaker 02:
of any other method by which an applicant has successfully made an express request other than checking box three?

[00:13:15] Speaker 00:
We haven't done an exhaustive survey on this, but I think applicants check box three.

[00:13:19] Speaker 00:
It's a very straightforward way to make an express request.

[00:13:24] Speaker 03:
But you agree that in this case an express request ultimately was made even though the box was never checked?

[00:13:30] Speaker 00:
No, Your Honor.

[00:13:30] Speaker 00:
An express request would need to be

[00:13:33] Speaker 00:
a clear and unambiguous request.

[00:13:35] Speaker 00:
So the PTO has two things.

[00:13:37] Speaker 00:
It has the form with box three not checked.

[00:13:41] Speaker 00:
And then it has this preliminary amendment with language in the text that I believe I found at the bar called boilerplate that is routinely included in applications with no international stage where nobody's trying to... So you're saying it was never made in this case?

[00:13:57] Speaker 00:
That's right, Your Honor.

[00:13:58] Speaker 00:
There was no express request here.

[00:14:00] Speaker 00:
PTO is looking at these...

[00:14:02] Speaker 02:
Just back up a second and answer my question, yes or no.

[00:14:06] Speaker 02:
You're an experienced practitioner.

[00:14:09] Speaker 02:
I didn't ask you for an exhaustive survey of the office.

[00:14:12] Speaker 02:
I just want to know, are you aware of any such instance?

[00:14:15] Speaker 00:
I am not aware of any instance where somebody has tried to request early national stage processing without checking the box.

[00:14:25] Speaker 00:
And that's not what they were doing here.

[00:14:28] Speaker 00:
This is language that requests early examination.

[00:14:32] Speaker 00:
Sorry.

[00:14:33] Speaker 00:
It's not language that requests early examination.

[00:14:35] Speaker 00:
It's language directed to the examiner.

[00:14:37] Speaker 00:
The reasonable thing, certainly not arbitrary and capricious for the PTO to do looking at box three not checked and this language in the preliminary amendment that is routinely used in cases without an international stage is to say they're not making an express request for early national stage processing.

[00:14:57] Speaker 00:
They do want the examiner to prioritize this case

[00:15:01] Speaker 00:
when it does begin the national stage.

[00:15:04] Speaker 00:
The Patent Cooperation Treaty puts the applicants in the driver's seat.

[00:15:09] Speaker 00:
It is their decision whether or not to make an express request for early national stage processing.

[00:15:16] Speaker 03:
So if we conclude that your retroactivity analysis was wrong, as a matter of statutory interpretation, and that the trial court erred in relying on standing, where does that leave us?

[00:15:29] Speaker 00:
Certainly.

[00:15:30] Speaker 00:
So to take the standing argument, the standing issue first, that it does not matter that the district court used the standing label.

[00:15:41] Speaker 00:
The analysis was the merits analysis.

[00:15:45] Speaker 00:
It was that this version issue does not matter here.

[00:15:48] Speaker 00:
And as the Supreme Court said in Morrison v. National Australian Bank, there's no need to remand to affix a

[00:15:57] Speaker 00:
12B6 label instead of a 12B1 label to the decision.

[00:16:02] Speaker 00:
Now, if you disagree with whether the Post-Technical Corrections Act, the Technical Corrections Act applies here, that makes no difference, as the district court said.

[00:16:15] Speaker 00:
But I do want to take a step back and explain why, although it does not matter in this case, it matters tremendously

[00:16:24] Speaker 00:
in overall that the pre-Technical Corrections Act not apply to all patents filed up to 2013.

[00:16:33] Speaker 00:
I think it would be actually helpful to have a statement from the court on this.

[00:16:37] Speaker 00:
As this court knows, the procedure for calculating PTA before the Technical Corrections Act was unwieldy to say the least.

[00:16:46] Speaker 00:
PTO had to issue PTA determinations before it knew what the PTA was going to be.

[00:16:52] Speaker 00:
And people had to file appeals before they knew what the PTO was going to do with their reconsideration.

[00:17:02] Speaker 00:
So the Technical Corrections Act fixes these procedural problems.

[00:17:07] Speaker 00:
Nobody gets less time.

[00:17:09] Speaker 03:
They certainly fix it going forward.

[00:17:11] Speaker 03:
The question is whether or not the language could reasonably be interpreted to make it retroactive.

[00:17:19] Speaker 00:
That's right.

[00:17:20] Speaker 00:
And there is no reason to think that Congress wanted us to continue to live with this broken process going forward until every application filed before 2013 has been fully examined.

[00:17:36] Speaker 02:
What's the alleged history that supports you?

[00:17:39] Speaker 00:
So there is not legislative history on this particular question, but

[00:17:45] Speaker 00:
What we would end up with, and the court knows it will be a very long time before every application filed before 2013 has been fully processed, we would end up in a situation... How many do you think there are?

[00:18:00] Speaker 00:
How many applications pending prior to 2013?

[00:18:02] Speaker 00:
I don't know the answer to that, Your Honor.

[00:18:05] Speaker 00:
I would guess there are hundreds of thousands.

[00:18:08] Speaker 04:
So we would have a situation where... Hundreds of thousands of applications, not...

[00:18:15] Speaker 04:
request to recalculate extensions.

[00:18:19] Speaker 04:
So every... Did you mean the latter?

[00:18:22] Speaker 00:
Every patent gets PTA awarded.

[00:18:25] Speaker 00:
So PTA process is an issue for every patent.

[00:18:29] Speaker 00:
So this is a statute where nobody gets less time.

[00:18:32] Speaker 00:
If proceeding is... If the PTA proceeding is not a separate proceeding under the statute, if the PTO's interpretation doesn't get deference, we have a world in which

[00:18:43] Speaker 00:
There are two different PTA proceedings depending on when a patent was filed.

[00:18:48] Speaker 03:
There's a world where there are lots of differences depending on when the patent is filed after the AIA.

[00:18:53] Speaker 03:
When the AIA did not say we're going to fix everything that's ever happened, it says we're going to change things going forward.

[00:19:01] Speaker 03:
There's no evidence that Congress said we're going to go back retroactively and change everything people have been relying on.

[00:19:14] Speaker 00:
I have two answers.

[00:19:16] Speaker 00:
One is the text of the statute, right, applied to proceedings commenced on and after that date.

[00:19:21] Speaker 00:
The PTO proceeding, as this Court knows, is made after examination is complete.

[00:19:26] Speaker 00:
It's a separate process with separate filings, separate timelines addressing a separate ultimate issue.

[00:19:33] Speaker 00:
So that is a separate proceeding, and the rules for that proceeding should govern going forward.

[00:19:38] Speaker 00:
The other point I want to make, though, is the reliance point, because as the District Court found,

[00:19:42] Speaker 00:
Nothing changes here.

[00:19:44] Speaker 00:
Nobody gets less PTA because of the Technical Corrections Act.

[00:19:49] Speaker 00:
There are a few people who get more, but nobody gets less.

[00:19:53] Speaker 00:
So this is not a situation in which somebody might be relying on a pre-Technical Corrections Act rule.

[00:20:04] Speaker 00:
The PTO's interpretation here of the fulfill the requirements of 371

[00:20:11] Speaker 00:
was longstanding.

[00:20:12] Speaker 00:
It makes sense.

[00:20:14] Speaker 00:
This is a regime that is about implementing a treaty.

[00:20:17] Speaker 00:
The language of the treaty is crystal clear that no designated office shall process or examine the international.

[00:20:24] Speaker 04:
Let's get back to standing.

[00:20:25] Speaker 04:
This really isn't a question of standing, is it?

[00:20:28] Speaker 04:
It's a question of the merits, interpretation of the law and the procedure and the timing.

[00:20:35] Speaker 00:
I think this is best viewed as a merits question.

[00:20:39] Speaker 00:
What the district court said was they're not injured because they're wrong.

[00:20:42] Speaker 04:
They have standing.

[00:20:44] Speaker 04:
They have standing.

[00:20:46] Speaker 04:
If they met the requirements of the act.

[00:20:51] Speaker 00:
People do generally have standing to challenge their PTA.

[00:20:54] Speaker 00:
The district court's decision was really a merits decision.

[00:20:56] Speaker 00:
They're not injured because they're wrong, because they're not entitled to this time under any view of the world.

[00:21:02] Speaker 00:
But as the Supreme Court has said,

[00:21:05] Speaker 00:
we don't need to remand to put a different label on that decision.

[00:21:09] Speaker 00:
The district court was correct.

[00:21:11] Speaker 00:
They do not get this additional PTA.

[00:21:14] Speaker 03:
So the district court is correct.

[00:21:15] Speaker 03:
And we have a district court judgment that never reached the retroactivity issue.

[00:21:19] Speaker 03:
And you're asking us to now reach the retroactivity issue.

[00:21:22] Speaker 03:
Wouldn't that just be an advisory opinion at this point?

[00:21:27] Speaker 00:
So the court can affirm on any ground supported by the record.

[00:21:32] Speaker 00:
There are any number of ways to get to the place where they don't get the additional PTA.

[00:21:42] Speaker 00:
One is that nothing changed between these two statutes.

[00:21:47] Speaker 00:
One is the Technical Corrections Act does not apply because the proceedings started after either one of those works.

[00:21:58] Speaker 00:
I only wanted to flag that this pre-Technical Corrections Act process was extremely unwieldy, and there is no reason to think that Congress would have wanted that process to continue to apply.

[00:22:12] Speaker 00:
Nobody else wanted it either.

[00:22:14] Speaker 00:
We did notice and comment on the definition of proceeding, and nobody asked for it to apply based on when the patent was filed.

[00:22:22] Speaker 00:
Some people wanted it to apply to even more

[00:22:26] Speaker 00:
patents, because nobody loses time under this, and the process makes more sense.

[00:22:30] Speaker 00:
But nobody asked for it to apply based on the date that the patent was filed.

[00:22:36] Speaker 04:
And there was a break between the issuance of the patent and the filing of requests to change the PTA.

[00:22:46] Speaker 04:
So it wasn't a continuous proceeding.

[00:22:49] Speaker 00:
That's right.

[00:22:49] Speaker 04:
It was a new proceeding.

[00:22:51] Speaker 00:
Exactly, Your Honor.

[00:22:52] Speaker 00:
We can't even think about what

[00:22:54] Speaker 00:
PTA is until the patent has been issued, the examination is complete.

[00:23:00] Speaker 00:
And then there's a new process, new question, new timelines.

[00:23:04] Speaker 00:
This is an entirely reasonable reading of the statute and it would make no sense to think that Congress wanted us to interpret the statute the other way, to continue living under this unwieldy pre-Technical Corrections Act regime where people

[00:23:20] Speaker 00:
were filing court cases before they knew what the PTO was going to do with their reconsideration motion.

[00:23:26] Speaker 00:
That just didn't make sense.

[00:23:29] Speaker 00:
But what we have in looking at either version of the statute is a regime that is implementing a treaty that is very clear.

[00:23:39] Speaker 00:
PTO, no designated office, can start until the time in the treaty is up without an express request.

[00:23:46] Speaker 00:
And there simply was no express request here.

[00:23:48] Speaker 03:
So it's really the treaty provisions that govern here, or the interaction between that and 371.

[00:23:54] Speaker 00:
So 371 implements the treaty.

[00:23:57] Speaker 00:
It should certainly be read to do what it was intended to do, which is implement the treaty, not to do something different from the treaty.

[00:24:05] Speaker 00:
And under both 371 and the treaty itself, it is quite clear PTO can't start without an express request.

[00:24:14] Speaker 00:
There just wasn't an express request here.

[00:24:16] Speaker 00:
It is not hard to make one.

[00:24:20] Speaker 04:
They can't start or they can't start early.

[00:24:24] Speaker 00:
I'm sorry?

[00:24:24] Speaker 04:
They can't start to examine or they can't start to examine early.

[00:24:28] Speaker 00:
They can't start to examine until that time in Article 22 of the treaty has expired.

[00:24:34] Speaker 03:
So either there's an express request or the 30 days has passed.

[00:24:38] Speaker 00:
Did I say 30 days?

[00:24:38] Speaker 00:
I meant 30 months.

[00:24:39] Speaker 03:
30 days, I'm sorry.

[00:24:41] Speaker 03:
No, I said 30 days, not you.

[00:24:42] Speaker 00:
30 days come up a lot.

[00:24:46] Speaker 00:
But yeah, either there's an express request or that time has expired.

[00:24:49] Speaker 00:
371 explicitly references the time in Article 22 of the treaty, as does Article 23 of the treaty.

[00:24:56] Speaker 00:
And there simply was not an express request here.

[00:25:00] Speaker 00:
If there are no further questions, I ask a question.

[00:25:03] Speaker 02:
I just want to say, it sounds a lot like you're arguing international law here.

[00:25:08] Speaker 02:
I've read some places that federal courts can't apply international law.

[00:25:12] Speaker 02:
It's so confusing.

[00:25:14] Speaker 00:
Your Honor.

[00:25:15] Speaker 00:
This treaty was explicitly implemented in 371.

[00:25:19] Speaker 00:
I know it was.

[00:25:20] Speaker 00:
I know it was.

[00:25:21] Speaker 00:
And the well-established canon.

[00:25:24] Speaker 00:
I'm just saying.

[00:25:27] Speaker 00:
All right.

[00:25:27] Speaker 00:
Thank you, Your Honor.

[00:25:28] Speaker 00:
No further questions.

[00:25:29] Speaker 04:
That's what's called a curveball.

[00:25:33] Speaker 04:
Mr. Hoxie, you have some rebuttal time, almost three minutes.

[00:25:37] Speaker 01:
OK.

[00:25:37] Speaker 01:
Thank you, Your Honor.

[00:25:38] Speaker 01:
Yeah, I just want to make a couple of quick points.

[00:25:41] Speaker 01:
First of all, Judge Laurie, with respect to your point

[00:25:44] Speaker 01:
that the request to reconsider the patent term adjustment was a new proceeding.

[00:25:54] Speaker 01:
The issue here relates to actions taken during the application process, whether we requested or didn't request, or if you determine that that's a relevant factor or not.

[00:26:09] Speaker 01:
So I think the retroactivity does apply to the applications that were handed out.

[00:26:15] Speaker 04:
When was the petition for reconsideration of PTA?

[00:26:18] Speaker 01:
It was filed subsequent.

[00:26:20] Speaker 01:
It had to be filed subsequent to the grant of the patent, obviously.

[00:26:23] Speaker 04:
Right.

[00:26:24] Speaker 04:
So it was a separate proceeding.

[00:26:26] Speaker 01:
OK, Your Honor.

[00:26:28] Speaker 01:
But relating to actions, but the actions that are changed in that section of the Technical Corrections Act that we're referring to,

[00:26:38] Speaker 01:
were actions taken not in the PTA proceeding, but in the application proceeding.

[00:26:46] Speaker 01:
And the next point I'd like to make, Your Honor, if I may, is that under either version of the statute, the pre or post AIATCA, the PTO concedes that all the requirements to international stage were certainly met by Monday, January 16.

[00:27:06] Speaker 01:
And that's in the filing receipt.

[00:27:09] Speaker 01:
And they've agreed to that.

[00:27:11] Speaker 01:
The only reason for taking this additional day and starting the 14-month period on the 17th was that Monday was Martin Luther King Day.

[00:27:23] Speaker 01:
So because Monday happened to be Martin Luther King Day, even though there was nothing more for applicant to do and the 30 months had passed and everything was good to go,

[00:27:36] Speaker 01:
there was this additional delay.

[00:27:38] Speaker 01:
And the PTO has argued that ECT rule 80.5 mandates this extension of time.

[00:27:46] Speaker 01:
That rule, I'd just like to point out, relates not to all time periods, but only to periods to provide documents or fees, not to the 30-month period.

[00:28:00] Speaker 01:
So, you know, with, with regard to sort of in the abstract thing starting.

[00:28:05] Speaker 01:
And in the context of the 14-month period, you know, whether the PTO wants to start processing earlier, or it feels like it shouldn't, or it wants to start it later, or how they manage it internally, none of that is relevant to... Those are all delays, and they may be totally justified, but none of those are relevant to the applicant's pattern term adjustment under 35 UIC 135.

[00:28:33] Speaker 01:
And Your Honor, I see my time is up.

[00:28:34] Speaker 01:
Quick question.

[00:28:36] Speaker 02:
Other than patent term adjustments, Mr. Ossi, have you filed, since January of 2012, have you filed anything with a PTO asking for early examination and allowance of payments?

[00:28:53] Speaker 01:
I believe we have done that.

[00:28:55] Speaker 01:
Thank you.

[00:28:57] Speaker 04:
Thank you.

[00:28:58] Speaker 04:
The council will take the case under advisement.