Patent term adjustment

Your Jargon-Free Guide to Patent Term Adjustment

What is a Patent Term Adjustment?

A Patent Term Adjustment (PTA) is a way to extend the life of your patent, especially for utility and plant patent applications. Imagine this as a compensation mechanism for when the United States Patent and Trademark Office (USPTO) takes longer than expected to review your patent application. As specified in Section 156 of the Patent Act, it is important to distinguish between a Patent Term Adjustment and a Patent Term Extension. 

What Can Cause a Patent Term Adjustment

PTA delays can be caused by various factors. Here’s a breakdown of the key triggers: 

“A Delays” 35 U.S.C. § 154(b)(1)(A)) 

  • When the USPTO takes more than 14 months after your first application filing to respond. 
  • If the USPTO acts more than four months after you reply to their office action. 
  • When the USPTO acts more than four months after a decision on appeal or a federal court ruling. 
  • If the USPTO grants a patent more than four months after the payment of the issue fee. 

“B Delays” (35 U.S.C. § 154(b)(1)(B)) 

  • If your patent application is still pending after three years post the issue fee, excluding specific delays, including: 
  • The imposition of a secrecy order. 
  • Review by the USPTO on appeal or by a federal court. 
  • Delays caused by processing requests made by the applicant.

“C Delays” (35 U.S.C. § 154(b)(1)(C))

C-Delay refers to delays caused by the applicant, such as missing USPTO notifications or seeking examination delays. A Patent Term Adjustment is granted if the issuance of the patent is delayed due to: 

  • An interference or derivation proceeding. 
  • The imposition of a secrecy order. 
  • Appellate review that resulted in a reversal of an adverse determination of patentability 

Patent Term Adjustment Reductions

Delays during the application process could lead to a reduction in your Patent Term Adjustment. This happens when the applicant isn’t actively trying to speed things up. Reductions include taking more than three months to respond to USPTO communications or circumstances that lead to delays, such as submitting incomplete responses. These reductions won’t dip your patent term below the standard 20-year term. 

Calculating a Patent Term Adjustment

Calculating a PTA involves several phases. The USPTO calculates it based on the projected issue date. If you think there’s an error, you can file a protest. Keep in mind that PTA calculations are subject to laws and regulations that may change, so consulting with the USPTO or a patent attorney is a wise move. 

Best Practices for Patent Term Adjustment

Navigating PTAs requires some finesse. Here are some best practices to keep in mind: 

  • Independent PTA Calculation: Calculate PTA independently, following the current rules and regulations. If an error is identified, consider filing a petition with the PTO to challenge the PTA calculation.
  • Reconsideration for “Applicant Delay”: Patentees have the option to request reconsideration of PTA deductions attributed to “applicant delay” during periods where no reasonable action could have been taken to prevent the delay.
  • Timely Filing of IDS: Don’t file an IDS after responding to a requirement; it’s considered a delay. Did you know? PatDocs allows you to autogenerate IDS forms to save you time and avoid delays.  
  • Terminal Disclaimer Considerations: Carefully evaluate the implications of filing a terminal disclaimer. It may or may not negatively affect PTA, but it does not impact patent term extension granted for regulatory review delays by the U.S. Food and Drug Administration.
  • Request for Continued Examination (RCE) and Interference Proceedings: Keep in mind that an RCE period is not terminated by an interference proceeding. You may still be entitled to PTA for A or C delays.
  • Consider Appeals Instead of RCE: Consider filing an appeal rather than an RCE to preserve B delay.
  • Reconsider Supplemental Amendments and Post-Allowance Amendments: Filing supplemental amendments or amendments after allowance will be considered applicant delay. When possible, rectify issues in the next reply or through an examiner’s amendment.

These strategies can help patentees navigate Patent Term Adjustments effectively while adhering to the current regulatory guidelines. Nevertheless, it’s always best to speak with a patent attorney for more help and information.  

Minesoft Can Help You Navigate Term Adjustments

Successfully navigating Patent Term Adjustments can be key to an effective IP strategy. Minesoft’s PatDocs and PAIR Alerts can help streamline patent processes, especially for the USPTO. Automated Alerts and tools like the IDS Form Generator and Patent Family Tree can speed up your workflow and ensure you don’t miss important deadlines. For a firsthand look at how Minesoft can elevate your patent game, request a demo or reach out for more information today!