The following is a discussion of patent term extensions; both how they are triggered and how they are offset. Also presented are strategies that minimize offsets to extensions.
Patent term adjustments can be significant to an applicant because they extend the term of a patent. Consequently, they can serve to legally extend patent licenses, periods of infringement, and a barrier to entry into a market. Some practitioners, however, do not understand what triggers positive adjustments; partly because the rules are complicated and partly because challenges to adjustments calculated by the PTO are rare. Also, it is often overlooked that actions by an applicant can offset a positive term adjustment, even when those actions fully comply with U.S. Patent Laws, PTO rules, and widely-accepted practices and procedures. I submit, therefore, that it is not only prudent to understand what triggers a term extension but also to consider practices that minimize offsets to term extensions.
The Legal Framework
The American Inventors Protection Act of 1999 (“the AIPA”) authorizes extensions of the term of a U.S. patent to account for U.S. Patent Office failures to take certain actions within specified timeframes during the examination process. Specifically, the AIPA guarantees the following:
1. that the U.S. Patent Office will initially act on an application within 14 months of its filing date or the date on which an international application fulfilled the requirements to enter the national stage;
2. that the USPTO will respond to a reply or appeal within 4 months from the date that a reply or appeal is filed;
3. that the USPTO will act on the application within 4 months after a Decision from the PTO Board of Appeals or Federal Court, where at least one allowable claim remains in the application;
4. that the USPTO will issue a patent within 4 months of the issue fee payment date; and
5. that an original patent will issue no more than 3 years from the actual filing date of the application in the United States.
Strategies to Maximize PTAs
The AIPA also authorizes deductions from an extension to account for times when an applicant “has failed to engage in reasonable efforts to conclude prosecution.” Some of these deductions are inevitable in view of the nature of PTO practice. Other deductions can, however, be minimized or avoided entirely bthrough some minor adjustments to everyday practice. So, to minimize deductions to term extensions, consider the following strategies.
1. Avoid filing any response later than the statutory period for response set forth in an Office Action or Notice, even if the response period is properly extendable by petition or falls on a weekend or Federal holiday.
A better practice is to file responses by the three-month deadline whenever possible. And, if a response deadline falls on a weekend or holiday, file it on the preceding business day, even though the Patent Office rules permit filing on the next business day.
2. File papers electronically, by Express Mail, or by facsimile.
Responses filed by first class mail are considered (for purposes of PTA) to have been filed on the day they are actually received by the PTO, regardless of certificates of first class mailing. Papers filed electronically or by Express Mail are also considered filed as of the date of receipt, but receipt is virtually contemporaneous with transmission. Papers filed by facsimile are deemed filed as of the date of receipt so long as the USPTO is open for business. Accordingly, it is preferable to file papers, in descending order of preference, electronically or by Express Mail, facsimile, and lastly, first-class mail.
3. Consider making elections by telephone.
Written restrictions count as an Office Action for the purpose of the fourteen-month guarantee to act on an application (guarantee #1 above). And, an Office Action imposing a restriction and/or election is far easier to generate than a first Office Action on the merits. Consequently, a better strategy is to make oral elections, which is more likely to delay the mailing of a first Office Action and thus result in a PTA.
4. Avoid filing supplemental responses (when possible).
A better practice is to minimize the number of supplemental responses filed by employing alternatives, when possible. For example, one alternative may be to call the Examiner to determine whether an issue can be addressed in response to the next Action or resolved by an Examiner’s Amendment. And, when an Examiner suggests an amendment to allow the application, ask the Examiner to effect the changes by an Examiner’s Amendment.
5. Avoid filing an Information Disclosure Statement (IDS) after a first Office Action has issued, unless the IDS is filed with a response or the submitted information was cited by a foreign patent office fewer than 90 days before the filing date of the IDS (when possible).
A better practice is to file IDSs well before the first Office Action. If an Office Action is pending, wait to file the IDS with the response. Also, advise foreign patent attorneys of the 90 day deadline, to ensure that foreign-cited references can be submitted within that time frame.
6. Avoid filing Amendments after a Notice of Allowance has issued.
A better strategy is to ask the Examiner to make the correction by an Examiner’s Amendment. (See MPEP § 1302.04). Also, if the error is a minor one that is supported by the prosecution history, consider making the correction by a Certificate of Correction after the patent has issued.
© 2007, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney