Extending the Patent Term: Most Patents Are Extended Due to PTO Delay

ScreenShot04435 U.S.C. 154(b) provides for an adjustment of the standard patent term in cases where a patent’s issuance is delayed because of delay at the U.S. patent and Trademark Office.

I looked at all 6155 original utility patents issued between March 1 and March 13, 2008 to see how often patent terms are adjusted. In this sample, the vast majority of issued patents have an extended patent term due to Patent Office delay. Specifically, 72% of the issued patents include at least some 154(b) extended patent term. Among those with an extended term, the average extension is 392 days. A few patents from the group have very long extensions that approach five years. These are generally explained by (1) secrecy orders and (2) BPAI reversals. (See Patent Nos. 7,342,534 and 7,339,604). 

The first chart below is a histogram of the the patent extensions. As can be deduced from above, 28% of the issued patents have no extension. Slightly over 10% of the issued patents were granted an extension of three months (0.25 years) or less. A cumulative frequency chart of this same data would show that just over 50% of all the issued patents have a term extension lasting more than six months.

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Of course, the extension term is correlated with the length of time in prosecution. The following scatter plot shows this relationship quite well. The demarcated boundary on the plot is an indication of the potential extension when the entire delay is attributable to the PTO.

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Other studies show that primary examiners are “quicker” — i.e., that patents examined by a primary examiner issue more quickly and with fewer amendments than those examined by assistant examiners.   Here, I also found a difference between the type of examiner.  As may be guessed, issued patents associated with an “assistant examiner” are much more likely to have an extension. (78% of patents with assistant examiner have extension compared with 69% of patents examined only by a primary examiner). It appears that at least some of the quickness is due to the examiner actually acting more quickly (rather than merely compromising more easily).  Similarly, continuations are much less likely to receive extensions than patents without any ancestral history.  (78% of patents with no ancestry have extension compared with only 61% of patents that reference one or more parent).  That result is explained by the PTO’s procedure of reviewing continuation applications on a priority basis.  Combining these numbers, I find a recipe for delay: In this study a patent with no ancestry that is examined by an assistant examiner has an 83% chance of received extensions due to PTO delay.

As with every measure of patents, the results vary dramatically according to the area of technology. Here, we see that Computer & Communication related patents (according to classification) are much more likely to receive a term extension due to PTO delay and, when an extension is proper, those same patents have a much higher expected extension duration.

Category Percent Receiving Extension Count of Patents Average Extension (Days)
Chemical 73% 606 343
Computers & Communications 82% 1690 544
Drugs & Medical 74% 536 387
Electrical & Electronic 64% 1369 270
Mechanical 67% 900 268
Others 65% 713 297

There are several potential practical implications of these findings: (1) a prosecuting attorney should be careful to avoid delay because applicant delay will naturally push-back the issue date and additionally reduce the eventual patent term; (2) In many cases, quicker issuance is preferable to an equivalent extension. However, it is important to consider whether delay is preferable for your case. (Of course taking affirmative steps to increase delay could be interpreted as a form of laches.

23 thoughts on “Extending the Patent Term: Most Patents Are Extended Due to PTO Delay

  1. 23

    If there are more than 600 days between the filing date and Notice of Allowance date, then that may give rise to a term extension or at least reason enough for the attorney to look into the matter further on receiving the Notice of Allowance.

    I set up my reminder program to include such a tickler (If (600 – (NOA date – Filing date)) is less than zero, then review application for possible term adjustment).

  2. 22

    JedinAz – Nope, that’s not my experience. I would say I get PTA on about 80% of my allowances, and I would say that it’s usually right on target. I primarily deal with biotech art units (1638, 1645) but also some mechanical units. I have not ever had to file a request for reconsideration of PTA. For reference, I had about 50 granted patents in 2007, so that’s a pretty high number of PTA determinations, for what it’s worth.

    What art units are you dealing with?

  3. 21

    What about making easier for primary to become a GS-15 level?
    Primaries at this level will be moving more cases.

  4. 20

    I’m a little confused as to how a patent term extension comes about. Here is my understanding. The extensions seem to start at 600 days (per the above chart)(with 730 days representing two years (365 + 365)). On receiving a notice of allowance typically after 900 days of prosecution (about 2 1/2 years), the patent office says you get zero (0) days extension without any explaination. You then have to spend the client’s money to tell them they are wrong by filing a “request for reconsideration of patent term adjustment determination”. Is this correct or does the patent office ‘fess-up and initially make a HONEST determination of the period of any patent term adjustment? I don’t recall ever receiving an adjustment in the Notice of Allowance, even for very long term prosecutions. I always have to fight for a term extension. Is this everyone else’s experience?

  5. 19

    Edge,

    Your last post does not make sense, if most of the value is earned during the first few years, why do you want the extra time?

    The current system seems fairest.

  6. 18

    CAPat,

    It’s pretty simple. If I don’t want to pay maintenance fees (maybe because in the area of technology of my patent most of the value of the patent is experienced during the first years of its lifetime), I only have a patent for 4 years from issue date, regardless of how long the “extension” is. If the due date of the maintenance fees is moved by the amount of the extension, then I have an automatic extension regardless of whether I want to pay all three maintenance fees. As it currently stands, I have to pay all three maintenance fees, and don’t even experience the “extension” until after 20 years after the file date.

  7. 17

    With regard to the classification chart at the end of the article, was biotech lumped in with chemical or with drugs/medical? Or is it with “other”? I’m specifically wondering about plant biotech (i.e. art unit 1638 et al.) Thanks.

  8. 16

    Patent Term Adjustment (PTA) – covers reductions as well as extensions. PTA is the phraseology used by the USPTO.

  9. 15

    If you read Jason Chung’s article, you will notice he states examiners can get expert level. Chung states he was a former examiner. However, Chung points out that there is no incentive for an examiner to get expert level because it normally takes years to get to that level (maybe 15-20 years). After 15-20 years, a primary is close to the government max for salary (about $150K) since the primary will be near a GS-14 step 10. Consequently, that GS-14 step 10 primary will be near his/her max in government salary and will have no incentive to get a promotion to GS-15 and have to do more counts.

    I think Mr. Chung proposed giving primaries the option, not mandating the promotion. That way, if primaries can handle the workload, they have the option of getting to max out their government salary.

  10. 14

    Mr. Chung presents a number of great ideas, such as promoting almost all GS-14 primary examiners (if they can handle the production) to GS-15s. As a result, they would be paid the same as those jobs they seek, such as SPEs (who are GS-15s). The GS-15 primaries would be doing more work as GS-15s.”

    You do know examiners can get up to like expert level already and basically achieve that as is right? Problem is, it’s hard to handle that extra work and the pay increase doesn’t justify it. Up that pay about 40k and you might see people wanting to do it. Might.

  11. 13

    Read Jason Chung’s article, “Patent Pendency Problems and Possible Solutions to Reduce Patent Pendency at the USPTO.” It’s citation is 90 JPTOS 58.

    Mr. Chung presents a number of great ideas, such as promoting almost all GS-14 primary examiners (if they can handle the production) to GS-15s. As a result, they would be paid the same as those jobs they seek, such as SPEs (who are GS-15s). The GS-15 primaries would be doing more work as GS-15s.

  12. 12

    Edge, regarding maintenance fees, these fees are due at fixed intervals beginning with the date of issuance of the patent. So if the patent issue date is delayed, the due dates for maintenance fees are delayed by the same period of time. So, I don’t get your point.

  13. 10

    Posted by: CliveFenster | Mar 14, 2008 at 11:44 AM
    “”Other studies show that primary examiners are “quicker” — i.e., that patents examined by a primary examiner issue more quickly and with fewer amendments than those examined by assistant examiners. Here, I also found a difference between the type of examiner. As may be guessed, issued patents associated with an “assistant examiner” are much more likely to have an extension. (78% of patents with assistant examiner have extension compared with 69% of patents examined only by a primary examiner). It appears that at least some of the quickness is due to the examiner actually acting more quickly (rather than merely compromising more easily).”

    I’m not sure I completely understand this part. Do primaries interact with the applicants more to find common ground for allowability? Do they cite “better” art in the first action (that is, art that is closer to the claimed invention, so Applicant doesn’t waste time amending only to be hit with other art downstream)? Are they less likely to issue some of the more tenuous rejections? How can one conclude that they don’t compromise more readily?”

    Clive,
    Maybe I can shed some light on this. Dennis’ phrase was: “It appears that at least some of the quickness is due to the examiner actually acting more quickly (rather than merely compromising more easily).” I’d say this is due to the nature of being a Primary Examiner, who is permitted to sign off on their own work and doesn’t have to go through the cycle of handing work into their supervisor early in the bi-week (2 week production cycle), getting it back at the end of the bi-week (many, many SPEs did this while I was there and not just the ones I worked for, to be fair though, it was likely due to their own backlog and endless strings of unnecessary “management” meetings for things like CFC, office furniture policies and the Lord only knows what else upper management was putting these SPEs to sleep with) with changes, thereby forcing the assistant examiner to amend at the last minute (doing a rush job, which would statistically sacrifice quality and likely result in the more amendments the statistics are showing) or force them to take longer (i.e., wait until the next pay/production 2 week period to send out an office action).

  14. 9

    “Other studies show that primary examiners are “quicker” — i.e., that patents examined by a primary examiner issue more quickly and with fewer amendments than those examined by assistant examiners. Here, I also found a difference between the type of examiner. As may be guessed, issued patents associated with an “assistant examiner” are much more likely to have an extension. (78% of patents with assistant examiner have extension compared with 69% of patents examined only by a primary examiner). It appears that at least some of the quickness is due to the examiner actually acting more quickly (rather than merely compromising more easily).”

    I’m not sure I completely understand this part. Do primaries interact with the applicants more to find common ground for allowability? Do they cite “better” art in the first action (that is, art that is closer to the claimed invention, so Applicant doesn’t waste time amending only to be hit with other art downstream)? Are they less likely to issue some of the more tenuous rejections? How can one conclude that they don’t compromise more readily?

  15. 8

    Term extension is a misnomer for those who decide not to pay a maintenance fee. The “extension” should be added to the beginning of the life of the patent instead of the end. The due dates of the maintenance fees should be shifted by the “term extension”. This is especially important for patents that realize the majority of their value in the first few years after issuance.

  16. 6

    I think it’s misleading to characterize it as a term extension, when it’s really a time shift. PTO delay is something to think about, particularly if it’s continuing to increase, but I don’t think the term extension is a separate problem. In the olden days, the “extended” patents would have automatically expired later, since term was calculated from issue date. With the newer rules, the extension just reflects the later issue date, to try to put fairness into the process for patents that take longer to get through the PTO.

  17. 5

    “Great suggestion – – considering that it takes, on average, 5 years to become a Primary Examiner. Where do you propose the PTO go to find these Primary Examiners capable of producing at 110% on day 1 – – the University of Phoenix online patent examiner degree program?”

    -Actually, I think GratefullyExExaminer was being sarcastic when he made his post.

  18. 4

    “Where do you propose the PTO go to find these Primary Examiners capable of producing at 110% on day 1 – – the University of Phoenix online patent examiner degree program?”

    Couldn’t hurt to look there.

  19. 3

    “Simple solution to the backlog problem likely proposed by PTO management: Hire only Primary Examiners with at least three most recent years of demonstrated production of at least 110%”

    Great suggestion – – considering that it takes, on average, 5 years to become a Primary Examiner. Where do you propose the PTO go to find these Primary Examiners capable of producing at 110% on day 1 – – the University of Phoenix online patent examiner degree program?

  20. 2

    “the vast majority of issued patents have an extended patent term due to Patent Office delay.”

    duh.

  21. 1

    Simple solution to the backlog problem likely proposed by PTO management: Hire only Primary Examiners with at least three most recent years of demonstrated production of at least 110%

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