Extending Patent Terms

ScreenShot016I looked again at patent term adjustments (PTA) for US patents. 3294 utility patents were granted on February 17, 2009. Of those, 2467 (75%) included some patent term adjustment based on PTO delays in prosecution under 35 U.S.C. § 154(b). For each of these patents, some additional quantum of exclusivity is added to the end of the patent term so long as maintenance fees are paid.

The median adjustment was just over one year (376 days) with the average adjustment of 430 days. The longest adjustment in the group was over five years (1958 days). That patent (No. 7,490,438) is directed to an automobile door and is based on an application filed in 2000. In that case, the applicant appealed twice. The examiner was reversed both times. The applicant lost 11 potential PTA days for filing an IDS after the first office action.

Notes

17 thoughts on “Extending Patent Terms

  1. U.S. Application 09/077,337 was finally allowed. Its PTA is 1584 days.

    Let justice be done though the heavens may fall.

  2. Just Visitng asks: “Without giving out your ID, can you characterize the kinds of things that the PTO misrepresents when counting delays?”

    Sure.
    It is not uncommon for examiners to misunderstand technicalities of patent law and USPTO rules. A simple example is when they don’t understand the 112 indefiniteness rejection. Another example is when they don’t understand the difference between a restriction requirement and a species election. Sometimes it takes a number of rounds of response, rejection, response, telephone interview, petition to the commissioner, etc. just to get them straightened out on their misunderstanding of law and rules. But then when you look at the PTA record you find out they accused YOU of unjustified delay in prosecution of the case (thus explaining why it took more than 3 years from filing to issuance –if you haven’t blown that option by filing an RCE; or thus explaining why it is well beyond 4 months before you got your first substantive action on the merits because you see, it was YOU who was engaging in unjustified delay tactics all along). :-)

  3. The concept of patent term extensions base upon prolonged government process delay and inefficiencies is all Robert Kearns wanted after taking on the whole automotive industry.

    His thinking was the government granted him the “right to exclude” for a “limited time”. Since the government’s inefficient determination process (twenty some years of Federal Court litigation) postponed the starting of his time, He should be made whole not with money, but with all the US Patent Grant ever promised him “the exclusive right” for a “limited time”.

    http://Dennis-Kearns.com

  4. “If an examiner calls about a restriction…”

    That’s funny. Normally what I get is a written restriction with the form paragraph about a phone call being made but not resulting in an election.

    Well, duh. When you call my office at 5:00 AM on a week day, or at 10:00 PM on a Saturday, odds are the call is not going to result in an election being made.

  5. A minor point that may help with PTA – If an examiner calls about a restriction, don’t ask for a written requirement; the election / restriction will then usually appear in the first substantive office action, which will be much later and you get all PTA for this period.

    Note that filing an RCE stops PTA – imagine what the figures and numbers would have been otherwise

  6. “I don’t think examiners give PTA any thought when issuing a restriction requirement. The only goal in issuing a restriction requirement is to manage the effort spent examining a case.”

    Sure they do. Toward the end of every quarter the PTO gathers up all of the unexamined new cases and tells the examiners to issue restriction requirements in all of those cases coming up on 14 month pendency so that they don’t have to give PTA to those cases.

  7. “Some of these restriction requirements seem pretty lame, and I’ve wondered if they are just being issued to stop the clock on PTA and give 4 or 5 months of breathing room to get around to a first office action on the actual merits.”

    Every month Examiners are required to move their oldest new case (oldest actual U.S. filing date) and the oldest effective filing date, and restrictions accomplish this.

    Some areas set deadlines (i.e. all cases filed before X date must be processed within the quarter) and restrictions satisy this as well.

  8. “I’ve seen instances of out and out lying by PTO officials as to whose fault it was for various delays in prolonged prosecutions.”

    Without giving out your ID, can you characterize the kinds of things that the PTO misrepresents when counting delays?

  9. “I’ve wondered if they are just being issued to stop the clock on PTA”

    I don’t think examiners give PTA any thought when issuing a restriction requirement. The only goal in issuing a restriction requirement is to manage the effort spent examining a case.

    If an examiner gets a bunch of new cases added to their docket, a prudent thing to do would be to look through the new cases to see if any cases needed to be restricted since the restriction process delays the time to get a count for a first office action.

  10. “The longest adjustment in the group was over five years (1958 days). That patent (No. 7,490,438) is directed to an automobile door and is based on an application filed in 2000. In that case, the applicant appealed twice. The examiner was reversed both times.”

    More record breaking quality from the PTO.

  11. When doing Patent Term Adjustment reviews on allowed cases, I’ve noted that many times a restriction requirement is issued in lieu of a first office action on the merits in applications that are right at or long past 14 months since filing. This practice seems more prevalent in these situations than in situations where the examination starts well within the 14 month date since filing. In the realm of patent term adjustment, a restriction requirement stops the clock on the adjustment that begins accruing 14 months after the filing date under 37 CFR 1.702(a). Some of these restriction requirements seem pretty lame, and I’ve wondered if they are just being issued to stop the clock on PTA and give 4 or 5 months of breathing room to get around to a first office action on the actual merits. Any thoughts?

  12. Dennis, you’ve brought out a sore point for me.

    Patent Term Adjustment (PTA) is one more of those places where a vindictive examiner can cheat after having taken out their animosity on some poor inventor who can’t afford to keep fighting and fighting against senseless rejections, objections, requirements, and post-appeal re-openings of prosecution.

    While not wishing to give away my ID, I’ve seen instances of out and out lying by PTO officials as to whose fault it was for various delays in prolonged prosecutions. When the financially exhausted, little guy inventor finally gets his/her Notice of Allowance, he/she is in no mood to pay the attorney/agent yet more money for fighting against a fraudulent PTA record. So the phony record stands despite the wrongful pointing of fingers at the inventor for delaying the prosecution. In many instances the PTA records (you can look up yours in Private PAIR) are doctored up to make the USPTO “look good” despite egregious behavior on their part. Sigh.

  13. Since software applications are so backlogged at the USPTO and the examination takes so long since few Examiners want to allow software applications all these applications involving the “POWERFUL COMPUTER BRAIN” are easily getting 2-3 year PTEs, which means all of these patents are going to be vexing moon beam until well after he gets out of prison.

  14. You seem to be using the terms PTE and patent term adjustment interchageably. My understanding is they are not the same.Utility and plant patents which issue from original applications filed between June 8, 1995 and May 28, 2000 may be eligible for patent term extension (PTE) as set forth in 37 CFR 1.701 While utility and plant patents which issue from original applications filed on or after May 29, 2000 may be eligible for patent term adjustment (PTA) as set forth in 37 CFR 1.702 – 1.705. Ofcourse, the common thing is that such extension or adjustment results from certain specified types of delays which may occur while an application is pending before the Office.

  15. It will be interesting to see how patentees address errors in PTA. In the case of an error it will be interesting to see where redress is available. Such as with the PTO, with counsel who might have been in a position to identify and correct the error prior to payment of the issue fee, or with both.

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