A patent gives inventors a right to exclude others from selling a competing product for 20 years. The 20-year period is known as the patent term. If the patent term can be extended, it would be a crucial factor in determining the profitability of the invention over the life of the patent. There are certain circumstances that can increase the length of the patent term and this is where the concept of Patent Term Adjustment (PTA) comes into play.
What is a Patent Term Adjustment?
A Patent Term Adjustment (PTA) is an extension to the patent term of a patent due to examination delays caused by the USPTO.
The patent term was previously calculated as 17 years from the date of the grant of the patent. It didn’t matter if the USPTO caused a delay in obtaining a patent. The patent term was always 17 years.
The United States then changed the way that it calculated the patent term. Instead of the date of grant, the United States now calculates the patent term from the date of filing, namely, 20 years from the filing date.
Without PTA, if the Patent Office delays the examination of the patent application, the patent applicant is penalized with a shorter time period to enforce the patent against others. However, the patent applicant shouldn’t be penalized for delays by the patent office.
As such, the Patent Term Adjustment calculation was created to give back time to the overall patent term that was wasted by the Patent Office.
What triggers an extension of the patent term as a Patent Term Adjustment?
There are several reasons why a PTA may be granted, including:
Delays in Examination: One of the most common reasons for a PTA is a delay in the examination of the patent application by the PTO. If a patent application is delayed beyond the standard examination period, a PTO may grant a PTA to make up for the lost time. For example, the first office action should be mailed out within 14 months after the filing date.
Appeal and Reexamination Proceedings: Another common reason for a PTA is the time spent on appeal and reexamination proceedings. If a patent application is rejected by the PTO and the applicant decides to appeal the decision, the time spent on the appeal process may be eligible for a PTO. Similarly, if the PTO initiates a reexamination of the patent, the time spent on the reexamination process may also be eligible for a PTO.
How to maximize the Patent Term Adjustment?
To maximize the amount of PTA that’s applied to a patent, do the following:
- Argue against nonstatutory double patenting rejections; and
- Do not argue against restriction requirements.
Nonstatutory double patenting rejections are made by the examiner when the claims in the patent application are similar to the claims of a different application or patent owned by the same applicant. To overcome the double patenting rejection, a terminal disclaimer can be filed which cuts short the term of the patent to be coextensive with the claims in the other application or patent. By arguing that the nonstatutory double patenting rejection is inappropriate, you can have the patent term extended beyond another related patent. Otherwise, all patents within the family directed to similar claims will expire on the same date.
A restriction requirement is made when the claims are directed to a different so-called invention. The benefit of the restriction requirement is that any divisions between the claims that the examiner is calling out are determined to be nonobvious variants. For example, if the examiner makes a restriction requirement between method and apparatus claims, then the method and apparatus claims cannot be subject to a nonstatutory double patenting rejection.
How to calculate Patent Term Adjustments?
The calculation of a PTA can be a complex and time-consuming process, as it involves taking into account a variety of factors, including the length of the examination period, the time spent on appeal and reexamination proceedings, and any periods of suppressed or concealed information. Moreover, any delays caused by the patent applicant (i.e., inventor) are subtracted from the PTA due to USPTO delays.
In general, a PTA is calculated as PTO delays minus Applicant delays. The difference (if positive) in the delay is added to the patent term. The patent applicant is given more time at the end of the patent for delays caused by the patent office.
PTA = Sum of A, B, C types of PTO delays – Applicant delays – Overlap Delay, and the PTA cannot extend the patent term beyond any terminal disclaimer that has been filed.
An A-Delay is a delay by the patent office in mailing a first-office action or responding to a response from the applicant.
A B-Delay is a delay if the patent was granted more than 3 years from the date of filing.
A C-Delay is a delay caused by an interference or derivation proceeding, a secrecy order, or an appeal in which the patent application won the appeal.
Applicant Delay is a delay caused by the Applicant. For example, if the Applicant took an extension of time to file a response.
Overlap Delay is a delay between 2 or more similar delays. In that case, the delay of only one of those delays would be used to adjust the PTA.