The term of a U.S. patent has been changed from the old 17 month term from issuance to 20 month term from the date of application filing. This means that the patent term is running during the term of patent prosecution (or non prosecution while waiting for the examiner to reach the case on his/her docket).

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 extension of the patent term. (Note a patent term extension 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 terms of paragraph 2. 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.

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 notice of allowance. The applicant is provided one opportunity to request reconsideration of the patent term adjustment. The filing fee is currently $200.00.