The term of a U.S. patent extends for 20 years from the date the non-provisional application was filed. Prior to 1995, the patent terms was 17 years after the patent issued. Since the patent term begins at the date of application filing, this means that the patent term is running during the term of patent prosecution. The patent term clock is running while waiting for the examiner to reach the application on his docket of pending cases. USPTO delays may allow for a patent term adjustment.
Duration of Prosecution “Guarantee”
The USPTO has issued a “guarantee” that certain prosecution steps will take place within specified times 35 U.S.C. 154, MPEP 2730. If these steps are delayed, e.g., first office action, the applicant is entitled to an adjustment (extension) of the patent term. (Note a patent term adjustment is published on the first page of an issued patent.)
The “Guarantee of Prompt Patent and Trademark Office Responses” obviously applies to both patent and trademark applications. Included in the “prompt actions” is a first office action within 14 months of the application filing. The USPTO also promises to reply to the response of an applicant within 4 months and to issue a patent within 4 months of payment of the issue fee.
The USPTO guarantees that no application will extend beyond 3 years, subject to the specific exceptions. Generally, the patent term extension will be reduced by the amount of time the applicant “failed to engage in reasonable efforts to conclude prosecution of the application.” For example, failing to respond to a USPTO office action within 3 months will be considered failing to conclude prosecution.
Patent Term Adjustment
At the conclusion of the case (assuming an award of a patent) the USPTO determines whether the applicant/patentee is entitled to a term extension. This is communicated with the USPTO Notification of Issue.
The USPTO admits that the rules are complex for determining whether a term adjustment is merited and the amount of time of any such adjustment.
The applicant is provided an opportunity to request reconsideration of the patent term adjustment. The request must be filed within 2 months of patent issuance. The request must contain a Statement of Fact clearly explaining why the patent term should be adjusted. There is a filing fee that must be paid. Currently the filing fee is $200.00. Note that the 2 month deadline can be extend for 5 additional months. However, there is an additional filing fee for each month delay, which can total $3,000 in month 5.
© David McEwing, 2019