USPTO Finalizes Patent Term Adjustment Rules And Is Accepting Requests, At No-Fee, To Recalculate PTA

Background

The basic term of a utility or plant patent under current U.S. patent law is twenty years, calculated from the patent application filing date. Any delay by the U.S. Patent and Trademark Office, USPTO, in the processing of a patent application, reduces the effective duration of the applicant's patent term after issue of the patent. This could result in the loss of many years in the effective term after patent issue.

To address such delays, U.S. patent law provides for "Patent Term Adjustment" (PTA), which is added to the statutory twenty-year patent term to account for delays in the patent examination process, and which provides a "Patent Term Guarantee". The Patent Term Guarantee provides three main bases for adjusting the patent term:

"A Delay": accrual of time as a result of the USPTO not being able to meet time periods within which it has to take various actions. Principally, the first office action must be issued within 14 months from the filing date. "B Delay": accrual of time associated with the USPTO failing to meet the 3-year application pendency guarantee, from the filing date or from the date an international application enters the U.S. national phase. "C Delay": accrual of time associated with delays in derivation proceedings, secrecy orders and appeals. The PTA awarded is the total of the A Delay, B Delay and C Delay, less any overlapping days and less any delays attributed to the patent applicant1.

American Invents Act (AIA) and AIA Technical Corrections Act

Changes to U.S. patent law were implemented in the America Invents Act (AIA), but these were found to have a number of deficiencies. Accordingly, on January 13, 2013, an AIA Technical Corrections Act2 was enacted, principally to effect numerous corrections to the AIA. This Corrections Act also includes corrections to the PTA provisions. It has taken the USPTO some time to draft rules to implement these corrections, and the final rules were only announced on May 15, 20143. The USPTO's PTA calculator has been updated as of May 20, 2014 to reflect the changes.

Significant Update for PCT Applicants

The changes are significant, particularly for applicants of International (PCT) patent applications who have filed U.S. national phase entry applications. For these applicants, the 14-month period within which the USPTO must issue the first office action now commences on the national phase entry date. Previously, the period started on the date on which the application met...