What Is Patent Term Adjustment?

Patent term adjustment (PTA) is a process carried out by the U.S. Patent and Trademark Office (USPTO) that adds days to a patent's lifespan based on delays that occur from the USPTO during the patenting process.

A typical patent has a twenty-year term from the date that the patent is filed. Congress realized that the process for patent prosecution was taking a long time and eating into the lifespan of the patent, so they provided PTA as a way to increase the term of certain patents.

PTA Rules

Patent Term Adjustment is calculated using the rules formed under the Patent Term Guarantee Act of 1999. It is calculated based on examiner and applicant delays during patent prosecution.

Patent Term Guarantees

  • The rules promise to reimburse an applicant for the patent term lost due to prosecution delays caused by the United States Patent and Trademark Office.
  • PTA = 14-4-4-4-4 Rule delay + 3-Year Rule delay + PTAB Rule delay - Applicant Delay - Overlapping delay

14-4-4-4-4 Rule - A Delay

  • If the USPTO does not issue the first office action within 14 days of filing and all other office actions within four months of receipt of the applicant response, additional days will be calculated.

3–Year Rule - B Delay

  • You are available to receive a PTA if the PTO does not issue a patent within three years of filing.

PTAB Rule - C Delay

  • Any delays caused by PTAB appeals, interferences, or secrecy orders will be calculated into the PTA.

Applicant Delay

  • Any delays because of the applicant's failure to respond within three months of mailing an office action are calculated into the PTA.
  • Delays caused by the abandonment of the application are calculated.
  • Delays that are caused by the submission of a preliminary amendment or other preliminary papers less than one month before the mailing of an Office action or notice of allowance that requires the mailing of a supplemental Office action or notice of allowance are calculated into the PTA.
  • If there are delays because you have omitted something and the USPTO is awaiting your reply, those will be calculated into your PTA.
  • If there is a delay because of a submission of a supplemental reply or other paper that is not the one requested by the examiner, that is calculated.
  • Delays caused by a failure to file an appeal brief that complies with the request within three months from the date on which a notice of appeal is due to the Patent Trial and Appeal Board are calculated into the PTA.

Rule – Overlaps

  • The number of days overlapping between the 14-4-4-4-4 Rule delays and 3–Year Rule delays or 14-4-4-4-4 Rule delays and PTAB Rule delays are calculated into the PTA.
  • The overlapping days of delay are subtracted from the PTA so that the same day is not counted as a delay more than once.

Benefits of PTA

  • Patent term adjustments make sure that any possible patent term reduction caused by USPTO delay does not shorten the true lifespan of the patent.
  • PTA is especially beneficial to biotechnology and pharmaceutical inventions because commercialization usually happens long after the patent application has been filed. Research and development costs are very high and every day of the patent's lifespan is highly valuable.

Maximizing PTA

The best way to maximize your Patent Term Adjustment is to reduce application delays on your end as much as possible.

  • File any requested responses on or before the three-month deadline.
  • Avoid filing any incomplete or non-compliant replies.
  • Avoid any supplemental amendments or responses.
  • File your information disclosure statement before the receipt of the first office action.
  • Avoid Requesting Continued Examination (RCEs) because it stops the 3-year clock for PTA. Wait to appeal final rejections to help preserve the PTA.
  • Try to avoid submitting amendments under Rule 312 after a Notice of Allowance has been issued.
  • File your complete national phase applications to make sure they begin the application early.
  • Consider using the Quick Path Information Disclosure Statement (QPIDS) program if an information disclosure statement needs to be paid after receiving a notice of allowance.

Patent Term Adjustment Petitions

If you are unhappy with the PTA that has been given to you by the USPTO, you can petition for reconsideration no later than two months from the date the patent was issued.

Getting Stuck in the RCE Backlog

Although the RCE backlog is lessening, there are still some cases that have waited for the next Office Action for over a year.

If this happens to you, you may want to take steps to push the application closer to the top of the Examiner's pile. You can do this by filing an amendment to confirm any of the claims that the Examiner has agreed is allowable.

You may also need to file an IDS to cite references from any corresponding foreign applications you may have filed.

If you filed an amendment or an IDS with the USPTO, you will incur a deduction for Applicant Delay. That deduction will be the number of days from the filing of the RCE to the filing of the submission. So if an application has been with an examiner for 12 months and you submit an IDS, you will be charged with 12 months of "applicant delay," even if the Examiner doesn't act on the case for another year.

This means that while filing these forms may help your application be processed faster, you will lose valuable PTA days for your patent.

Post-RCE Submissions That Trigger PTA Deductions

The USPTO applies Rule 704(c)(8) broadly to any submission made during the post-RCE period. They look at it regardless of whether the submission had an impact on the examination process.

The following types of submissions in the post-RCE period may trigger a PTA deduction:

  • Filing an Information Disclosure Statement (IDS) without the 30-day certification.
  • Filing an IDS without disclosing that the information submitted was "first cited in any communication from a patent office in a counterpart foreign or international application or from the Office [that] was not received … more than thirty days prior."
  • Filing an Amendment.
  • Filing an Amendment to support a Request for Track I Examination. The Track I program allows an applicant to speed up the examination of an RCE. The fee is $4,000 plus a $130 processing fee.

Examples of Patent Term Adjustment Cases

Gilead Versus Michelle Lee

In the case of Gilead v. Michelle Lee, the litigation focused on whether a late submission of an information disclosure statement (IDS) should count against the applicant's Patent Term Adjustment. The Federal Circuit unanimously agreed that the PTO's interpretation of the statute was reasonable and enforceable.

The timeline discussed in the case is as follows:

  • February 22, 2008: Gilead files its patent application.
  • November 18, 2009: The USPTO mails a restriction requirement.
  • February 18, 2010: Gilead files a responsive election.
  • April 16, 2010: 57-days later, Gilead files a supplemental information disclosure statement.
  • July 29, 2011: USPTO mails them their notice of allowance.
  • April 3, 2012: An application is sent to issue the patent.

The particular disagreement is about whether that 57-days between its responsive-election and the filing of their information disclosure statement filing should be counted against Gilead.

The filing of the information disclosure statement appears to fall within the rule as written by the USPTO. Gilead's challenge is that the rule is invalid. Gilead argues that there is no sign that the filing of the information disclosure statement led to any delays in prosecution.

When rejecting Gilead's argument, the Federal Circuit found that:

  • The statute does not address the information disclosure statement and instead gives the USPTO authority to fill in the gaps.
  • The USPTO's approach of creating an across-the-board rule is reasonable even though an applicant's action may not have caused a delay in the particular case at issue.

Novartis Versus Michelle Lee

In Novartis Versus Lee, the Federal Circuit determined that the USPTO had incorrectly interpreted the law as applied to applications in which a Request for Continued Examination (RCE) was filed. That part of the Patent Term Adjustment statute provides an award of PTA when the USPTO fails to issue a patent within three years.

Under the USPTO's original interpretation of the statute, once an RCE was filed, the application no longer accrued "3-Year Rule" delay, although it might still accrue "14-4-4-4-4 Rule" delay and/or "PTAB Rule" delay.

The Federal Circuit held that the time after allowance up until the time of issuance is "time consumed by continued examination," which excludes it from adjustments made by the patentee.

The final rules implement what is now known as the Novartis decision.

  • The period of adjustment is the number of days in the period that begins on the day after the 3-Year date on which the application was filed. It does not include the sum of:
    • The number of days in the period that begins on the date on which a request for continued examination of the application was filed and ends on the date that a notice of allowance is mailed.

Magna Electronics, Inc. v. TRW Automotive Holdings Corp

In the case of Magna Electronics Versus TRW, Judge Maloney of the U.S. District Court for the Western District of Michigan granted TRW's motion for partial summary judgment of invalidity. They based this decision on obviousness-type double patenting.

The patent at issue was Magna's U.S. Patent issued March 4, 2008, after an interference proceeding. The patent was given 498 days of PTA because of the interference.

The cited patent was U.S. Patent 7,402,786, filed October 6, 2006 and issued July 22, 2008 with 63 days of PTA. The patent expired on February 26, 2013 because of a Terminal Disclaimer.

The patent issued was a parent patent that had earned PTA, while the cited patent was its later-granted child patent with a twenty-year term.

How To Find Out if a U.S. Patent is Valid

A patent can be enforced starting on the date it is issued by the USPTO, known as its Issue Date. It is enforceable until the length of the term is up. After the patent expires it is available to anyone.

To determine if a patent is still enforceable, you need to check on the USPTO website. If you are looking up a specific patent, you will be able to see the start date of the patent and when it is due to expire.

The USPTO also has a Patent Term Estimator spreadsheet. It allows you to estimate a patent term by filling in different information.

If a patent is an original issue Utility Patent, a Plant Patent, or a Reissue of a Utility Patent and the number is 4,999,999 or less you can assume that the patent has expired.

You can also figure out if a patent is still in force by following these steps:

1. Start with the Basic Patent Term

  • Look up the patent on the USPTO patent database, the European Patent Office's espacenet system, or on Google Patents.
  • Utility Patent and Plant Patent applications filed after June 8, 1995, have a term of 20 years from the U.S. filing date.
  • Utility Patent and Plant Patent applications that were pending on June 8, 1995, and any Utility or Plant Patent issued on or after June 7, 1978 that didn't expire before June 8, 1995, have a term measured by either 17 years from the date of issue or 20 years from the date of filing.
  • Utility and Plant Patents issued before June 7, 1978, were given a 17-year term and have all expired.
  • Design Patents granted on applications filed before May 13, 2015, were given 14-year terms which began on the date of issue.
  • Design patents granted on applications filed on or after May 13, 2015, are given a 15-year term which begins on the date of issue.

2. Is the term of the patent tied to the term of another patent?

Some patents have less than the usual life span because their terms are based on the terms of a patent issued earlier. This is known as a terminal disclaimer. Terminal disclaimers happen when two applications are filed claiming the same invention.

Terminal disclaimers may be flagged with an asterisk after the patent issue date, but often they only tell you in the text of the patent or with the related application data. In some rare cases, there is a note printed on the patent that states it is subject to a terminal disclaimer.

If it isn't clear on the patent, then you'll need to go to the USPTO Public PAIR system and try to find the terminal disclaimer. There is different vocabulary used depending on the type of terminal disclaimer hissued.

  • The Full Statutory Term: Most terminal disclaimers used in recent years are marked referring to the "full statutory term" of the earlier patent. If the earlier patent's term was extended, then the "full statutory term" will likely include the period of the term extension.
  • A Specific Date: If the terminal disclaimer explicitly states a term after a stated date and does not also reference the term of any other patent, then that date sets the disclaimed term for the patent. This was common for patents issued before 1995.
  • Both a date and the term of the earlier patent: Some older terminal disclaimers gave both a date on which the earlier patent would normally expire as well as the term disclaimed on the earlier patent. In those cases, when the terminal disclaimers were filed, the specified date and the normal expiration date of the patent were the same seventeen years from issue.

3. Was the basic term extended?

  • Patents issued on applications filed on or after May 29, 2000, might have had their terms extended under the Patent Term Adjustment Rules.
  • Patents issued between August 2009 and March 2010 were given special rules. The Wyeth Case held that the USPTO had been calculating adjustments incorrectly. After this court decision, the USPTO announced that patents issued before March 2, 2010, and pending for more than three years could have their PTA recalculated. Not all patent owners who fell into this category applied for the extension. For those who were granted adjustments, the PTA printed on the face of the patent would not be correct.
  • Some patents have had their terms extended based on extreme delays not in control of the Patent Office. This is rare and usually only occurs with pharmaceutical companies, food products, or medical devices where the FDA approval can take a long time.

4. Was there a reexamination or voluntary disclaimer that resulted in a loss of some or all the claims?

If there was a reexamination or voluntary disclaimer, it would be noted on a certificate attached to the patent image. It is usually the last page in the image file.

In rare situations, issued patents are withdrawn from issue by order of the Commissioner of Patents. If this is the case, they are not likely to be available in the USPTO database.

5. Have the maintenance fees been paid?

  • Utility Patents: There are maintenance fees due at three and a half years, seven and a half years, and 11 and a half years from the date of issue. The patentee can pay as early as six months before the due date and as late as a year afterward. If the fees aren't paid before the due date, the patent expires at the end of the grace period.
  • Be aware that if the patent has expired because of non-payment, it can still be revived.
  • Plant or Design Patents: No maintenance fees are due on these types of patents.

6. Has the patent been declared invalid by a court?

If a patent is invalidated by a court, it is no longer enforceable. There is no easy way to find out if this has happened. You will have to look up the case on a law website that lists court rulings or you can try to search for the patent on Google to see if a report turns up.

The End Of Patent Term Adjustment?

Parent patents usually have a longer examination process and earn considerable PTA if they are granted successfully after appealing an examiner's rejection to the Patent Trial and Appeal Board.

On the other hand, a parent patent could have narrower claims than a subsequently granted child patent. The child patent could claim a species anticipated by a genus claimed in the child patent.

Therefore, if a child patent can be cited against its parent, it can be hard to distinguish the claims on the merits.

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