© The Author (2007). Published by Oxford University Press. All rights reserved
Maximizing patent term in the USA
Legal context: The standard term of a US utility patent is twenty years from its filing date, but the term may be extended for various reasons. The statutory Patent Term Adjustment (PTA) scheme automatically extends the term of a patent by the number of days of delay in prosecution attributable to the United States Patent and Trademark Office (USPTO), minus the number of days of delay attributable to the applicant. By avoiding actions or inactions that result in delay, a US patent applicant may maximize the term of the resulting patent. This article is intended particularly for practitioners outside the US who are instructing a US practitioner.
Key points: Delay by the applicant chiefly results when more than three months elapses from the mailing of a USPTO action or requirement to receipt of the applicant's response or when a paper is filed at an inappropriate time. Such delays may be avoided or minimized by promptly sending instructions and required documents to the US patent attorney or agent in charge of the case. Time spent in an ultimately successful appeal of a final rejection will increase PTA. Errors in PTA calculations by the USPTO may be corrected upon filing a request.
Practical significance: PTA can be a potent source of extended US patent term, especially when the applicant takes care not to introduce delay into the examination process.
Key Words: Although it is customary to regard patent term as a rigid period, the United States' statutory Patent Term Adjustment scheme demonstrates a surprising degree of flexibility in the fine-tuning of the patent term, taking into account both avoidable and unavoidable delays that occur within the application process. • The provisions of this scheme are not well understood outside the USA, with the consequence that professional representatives acting on behalf of international applicants from outside that jurisdiction are sometimes unable to maximize its benefits. • This feature seeks to summarize the mechanism through which patent term in the USA may be extended, addressing in particular the need for foreign applications to be put into a form that facilitates processing without the risk of self-induced delays.
Correspondence: * Scott E. Kamholz. The author, a patent practitioner in the Boston office of Foley Hoag since 2001, is contactable at skamholz{at}foleyhoag.com. The information and opinions expressed in this article are solely those of its author and should not be attributed to Foley Hoag or to any of its clients.