Patent Term Adjustment

Patent term adjustment (PTA) is a process carried out by the United States Patent and Trademark Office (USPTO) that awards day-for-day credits to the normal patent term based on delays in prosecution at the USPTO. Any USPTO delay that occurs during prosecution of an application is offset by delays caused by applicants.

The default term of a typical patent is twenty years, counted from the filing date of the patent application. Congress realized that the patent prosecution process can be rather lengthy, which eats into the patent’s lifespan, and so provided PTA to increase the life of certain patents. PTA is intended to compensate for USPRO delays in patent prosecution.

PTA Rules

Patent Term Adjustment is calculated based on the rules formed under Patent Term Guarantee Act of 1999, i.e. 35 U.S.C § 154 (b) and 37 CFR §§ 1.702-1.704.

Patent Term Guarantees- 35 U.S.C § 154 (b)

  • 35 U.S.C § 154 (b) codifies the promise to reimburse an applicant for the patent term lost due to prosecution delays caused by the PTO.
  • PTA = A delay + B delay + C delay - Applicant Delay - Overlapping delays

14-4-4-4-4 rule - “A delay”

  • Failure of the USPTO to issue the first office action within 14 months of filing of the application and all other office actions within 4 months of receipt of an applicant response.
  • The office action delays are calculated under 35 U.S.C. §154(b)(1)(A)(i) and 35 U.S.C. §154(b)(1)(A)(ii)

3 –year rule - “B delay”

  • Failure of PTO to issue a patent within 3 years from filing and the delays are calculated under 35 U.S.C. §154(b)(1)(B)

Rule - “C delay”

  • Delays due to PTAB appeals, interferences, and secrecy orders are calculated under 35 U.S.C. § 154(b)(1) (C)(i) - (iii)

Rule - Applicant delay

  • Delays due to failure of applicant to respond within 3 months of mailing of an office action are calculated under 37 C.F.R. §1.704(b)
  • Delays due to abandonment of the application are calculated under 37 C.F.R. §1.704(c)(3)
  • Delays due to submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance are calculated under 37 C.F.R. §1.704(c)(6)
  • Delays due to submission of a reply having an omission are calculated under 37 C.F.R. §1.704(c)(7)
  • Delays due to submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed are calculated under 37 C.F.R. §1.704(c)(8)
  • Delays due to submission of an amendment under §1.312 or other paper, other than a request for continued examination in compliance with §1.114, after a notice of allowance are calculated under 37 C.F.R. §1.704(c)(10)
  • Delays due to failure to file an appeal brief in compliance with §41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed are calculated under 37 C.F.R. §1.704(c)(11)
  • Delays due to submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance are calculated under 37 C.F.R. §1.704(c)(12)

Rule – Overlaps

  • The number of days that are overlapping between the A and B delays or A and C delays are calculated under 35 U.S.C. §154(b)(2)(A).
  • The number of overlapping days of delay are subtracted from the PTA so that the same day is not counted twice as a delay.

Benefits of PTA

  • Because patent term is now based on the priority date instead of the issued date, delays in prosecution may reduce the term of a granted patent. Patent term adjustment could effectively reduce any possible patent term reduction caused by USPTO delays.
  • For biotechnology and pharmaceutical inventions, the term of a patent is of particular importance because commercialization often occurs long after the patent application is filed and because research and development costs are often high. Every day in the term of a patent behind a successful product can be highly valuable.

Maximizing PTA

The best strategy to maximize PTA is to reduce application delay to the extent possible. We discuss here some ways to minimize patent term delays and costs.

  • File your responses on or before three-month deadline.
  • Avoid incomplete/non-compliant replies.
  • Avoid incomplete/non-compliant replies.
  • Avoid supplemental amendments/responses
  • File IDS promptly
    • Before receipt of first office action
    • File along with the reply to office action (filing an IDS after a reply may cause an applicant delay)
    • Within 30 days of foreign or US office action (with certification under 37 CFR 1.704(d))
    • Before notice of allowance
  • Avoid Requesting Continued Examination (RCEs) as it stops the 3 year clock for PTA. Appealing final rejections way help preserve PTA.
  • Avoid the submission of an amendment under Rule 312 or other paper (such as formal drawings) after the issuance of a Notice of Allowance
  • Avoid unnecessary terminal disclaimers
  • File complete national phase applications to ensure early commencement of the application (14-month clock for first Office Action and 3 year B delay clock do not start until commencement of the application)
  • Consider the Quick Path Information Disclosure Statement (QPIDS) pilot program if an IDS must be paid after notice of allowance
    • QPIDS is a pilot program aimed to reduce pendency and applicant costs by eliminating the requirement for processing of a request for continued examination (RCE) with an information disclosure statement (IDS) filed after payment of the issue fee in order for the IDS to be considered by the examiner.
    • If the examiner determines that no item of information in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowability.
    • If prosecution is reopened on account of a reference that was made available to the examiner in the IDS, it is treated as if an RCE were filed and there is no applicant delay.
    • Note: QPIDS pilot program has been extended to run through September 30, 2016.

PTA Petitions

  • Reconsideration of the PTA determination by the PTO decision can be petitioned by filing a petition under § 1.705 (b) no later than two months from the date of issuance of a patent.
  • The deadline of two months may be extended under the provisions of § 1.136(a)

National Stage Applications

For the national stage of a PCT application, the 14 month A-delay and the B-delay are calculated based on the date of commencement of the nation stage. The date of commencement for national stage applications is the earlier of:

  • The 30-month date from priority (35 USC 371(b)),
  • The 35 USC 371(c) completion date

The easy to use do-it-yourself tool that helps you easily calculate the patent's PTA and compares it to the USPTO calculation.