Patent Term Adjustments

Obtaining a patent on an invention offers patent holders a limited monopoly on the right to exclude others from making, selling, using or importing the invention for a set amount of time. Utility and plant patents offer protection for twenty years from the filing date and design patents offer protection fifteen years from the date of issuance.

Can The Time Limit Be Extended?

As a general rule, patent holders are only entitled to protection for twenty years or fifteen years based on the type of patent that they hold, and as a general rule the period of protection cannot be extended. However, there are limited circumstances in which a patent term can be adjusted or extended for utility and plant patents.

Delays in prosecution of a patent application that are attributable to actions taken by the United States Patent and Trademark Office could warrant a patent term adjustment upon issuance. Design patents do not generally require any patent term adjustment, since the term for design patents is determined from the date of issuance.

Patent Term Adjustments

What happens if a patent application gets tied up in examination at the Patent Office for a long period of time? Since utility and plant patent rights last twenty years from the filing date of the application, if an application is tied up in prosecution for five to ten years, which happens in rare circumstances, a patent holder could lose out on some of the patent term once the patent issues.

There are special rules that the Patent Office is required to follow in terms of how quickly an application must be processed. These rules are codified in 35 USC Section 154(b). Whenever the Patent Office breaks one of these rules, the applicant is awarded patent term adjustment time based on the number of days behind schedule the Patent Office is in processing the application.

For example, applicants are supposed to receive their first communication from the Patent Office (either a restriction requirement, election, Non-Final Office Action (i.e., a rejection), or a Notice of Allowance) within fourteen months of filing the application. For every day beyond that until the requisite communication is produced, the Patent Office owes the patent applicant patent term adjustment time.

Patent term adjustment is calculated by the Patent Office upon issuance of a patent, and applicants have an opportunity to dispute the calculated term adjustment if they do not agree with the Patent Office’s determination.

If you have questions about patent term adjustments, please contact Parsons & Goltry online, or call 480-991-3435.