The normal term for a U.S. utility or plant patent expires 20 years from the earliest U.S. or International filing date. However, the American Inventors Protection Act of 1999 provides for adjustment (i.e. increase) of the patent term due to delays by the U.S. Patent and Trademark Office (PTO) in the examination process.
As a result of this Act, a U.S. utility or plant patent issuing from an original U.S. or International application filed on or after May 29, 2000 is entitled to a patent term adjustment (PTA) of one day for each day that the PTO fails to meet the requirements of the "14-4-4-4 Rule" (paragraph 1 below) or the "3 Year Rule" (paragraph 2 below) and for delays due to an Interference, a Secrecy Order and Appellate Review (see paragraph 3 below), to the extent that the periods of adjustment are not overlapping. However, the PTA days will be reduced by a period of time corresponding to any "Applicant Delays" (see paragraph 4 below).
1. The 14-4-4-4 Rule
(a) The PTO must issue an Official Action within 14 months from the filing of the application or fulfillment of the requirements of 35 U.S.C. 371 for a U.S. National Stage PCT application;
(b) The PTO must respond to a reply or appeal within 4 months from the date that the reply or appeal was filed;
(c) The PTO must act on the application within 4 months after a Decision from the PTO Board of Appeals or Federal Court, where at least one allowable claim remains in the application;
(d) The PTO must issue the patent within 4 months after payment of the issue fee and satisfaction of all outstanding PTO requirements.
2. The 3 Year Rule
The PTO generally must issue the patent within 3 years from the actual filing date of the U.S. application or entry into U.S. national stage prosecution under 35 U.S.C. 371(b) or (f) of an International application.
3. Interference, Secrecy Order, Appellate Review
A Patent Term Adjustment will be made for:
(a) delay due to an Interference Proceeding;
(b) delay due to the application being placed under a secrecy order;
(c) delay due to successful Appellate Review.
4. Applicant Delays
Any patent term adjustment will be reduced by any period in which Applicant "failed to engage in reasonable efforts to conclude prosecution of the application." Such Applicant Delays are defined in 37 CFR 1.704(c). A few of these are set forth below:
(a) Filing a Preliminary Amendment less than one month before an Office Action or Notice of Allowance issues, necessitating a supplemental Office Acton;
(b) Failing to respond to an Office Action within 3 months;
(c) Filing a Supplemental Response after a Response has been filed (Note: filing of an Information Disclosure Statement (IDS) can be such a Supplemental Response, unless the IDS includes a certification that the submitted prior art was received from a foreign Patent Office in a counterpart foreign application within 30 days);
(d) Filing a paper after issuance of a Notice of Allowance.
5. Patent Term Adjustment Determination
Upon allowance of an application, the PTO will issue a Notice of Patent Term Adjustment based on the foregoing considerations. The PTO calculation is probably correct in most cases. However, if there is an error, it is Applicant's responsibility to file a Request for Patent Term Adjustment prior to issue fee payment and pay the fee for such request (currently $200.00).
If the patent is issued late (see 1(d) above), such late issuance should be taken into account in a patent term adjustment indicated on the patent. In this case, a Request for Patent Term Adjustment must be filed within 30 days of patent issuance together within the PTO fee (currently $200.00).
6. Additional Comments
We will take due care to avoid actions that might result in a reduction of a Patent Term Adjustment. However, it must be recognized that some such reductions are inevitable in view of the nature of PTO practice.
For many patent applications, it is expected that the determination with respect to the Patent Term Adjustment will not be particularly critical. However, for certain applications, this determination will indeed be critical. If you are of the opinion that the patent term will be critical in a particular application, please advise with specifics so we can consider strategies to obtain the maximum allowable patent term.
If you have any questions or comments regarding Patent Term Adjustment, please let us know.
