# Calculating Patent Term

Does anyone have a process flow-chart that they could send to me to use when determining whether an issued patent is still in force? The process includes at least:

1. Calculate the original patent term — May be 20 years from fililing date or 17 years from issue date depending upon the timing of the application and issuance.
2. Calculate any term adjustment for PTO delays (PTA +).
3. Calculate any term adjustment for regulatory approval delays (PTE).
4. Determine whether there are any terminal disclaimers and, if so, calculate the term of the linked-to patent.
5. Determine whether patent term has been disclaimed for any other reason.
6. Determine whether clams were eliminated or changed based on reexamination or reissue.
7. Determine whether the patent has been found invalid or unenforceable by a court of law.

Thanks!

Dennis Crouch (dcrouch@patentlyo.com)

## 41 thoughts on “Calculating Patent Term”

1. 41
Babel Boy says:

Well, my take on the \$10 experiment is:

If I am C, I would refuse even the whole \$10 if offered by B because:
1. That will keep B from getting any of it and really pi\$\$ him off (he’s so greedy), and 2. I don’t want to have to report the \$10 on my 1040 and pay the US any more to run Gitmo.

If I was B, I would offer C a dime because: 1. He would refuse and not get anything and that would really pi\$\$ him off (he’s an arrogant prck), and 2. I don’t get any either so I don’t have anything to report to IRS.

The real answer is for B to offer C \$6 in return for \$4 in services. Then B ends up with value of the whole \$10 (\$4 cash, \$6 services) and C ends up with \$6 minus his cost of the services, if any, which cost is deductible as cost of business.

My golf buddy is an economist, and we have been fighting over the problem for years.

2. 40
MaxDrei says:

The problem, ping, is that homo economicus is illogical enough to cut off his nose to spite his face, so pure self-interest founders on homo’s inherent sense of fair play.

You surely know the “Ten Dollar” experiment, which delivers the same result wherever in the world you run it. A will pay 10 dollars to B, provided first B has reached agreement with C how the two of them will then split the 10.

If B offers C three dollars or less, C declines his agreement, even though that leaves him three dollars poorer than he would have been if he had accepted B’s offer of 3. C would rather be 3 dollars poorer than see B getting more than twice what he gets. So, B has to offer C four or more, in order to get any money at all out of A.

You must know this famous experiment. And yet you persist with Hilmer.

I think it is entirely respectable for the USA to try its best to convince ROW to patent business methods and, until that day dawns, to allow all and sundry to patent business methods at the USPTO. I would not be happy though if US patents on business methods are only available to US inventors. The US signed up to GATT and the WTO. I think I know why.

My favourite law is the one about Unintended Consequences. The European Union Law of Design Registration, for example. Intended by European politicians to help home industry and what does it do? It handicaps European industry relative to the more IPR-savvy ROW.

3. 39
Hagbard Celine says:

Perhaps some kind of special court hearing – a-la Markman – is required for determining the expiry date of a US patent. That would pretty much fit the pattern, n’est-ce-pas?

“After all, we still have the most impenetrably cryptic patents in the world…” – fixed that for ya.

“The USA – a nation founded and governed by and for the the benefit of lawyers”

4. 38
ping says:

It isn’t harmonized with the rest of the world.

Oh, the games we must play.

Ya see, while we gotta at least pretend to get along with ROW, all patent systems at their genesis have the host country’s best interests first. Should any of us be surprised really that the US wants whats best for the US first?

After all, we still have the best patents in the world and we still have the Gold Standards (even given the pernicious anti-patent forces within and without the Office).

5. 37
IANAE says:

“What isn’t it?”

It isn’t harmonized with the rest of the world.

6. 36
Patent_Medicine says:

I would move items 4&5 to items 1&2, they would set the base term to which PTA and PTE apply, and would eliminate the need to perform current item 1.

Why would you do that? There are many patents still in force, where one must decide if it’s the 17 or 20-year system that applies.

Dennis: I thought that your original question was quite hilarious, it so clearly set forth my major beef with the PTO: it has no business trying to create new rules to make understanding patents easier for laypeople, when almost no one can figure out when a patent expires. They need to mind that first.

7. 35
Poppa Bear says:

you just might happen to be liable for something you did wrong a few years ago.

Precisely, with the emphasis on “might”, which seems to be perfectly aligned with the uncertainty emphasis of this thread.

8. 34
MaxDrei says:

ping noted IANAE’s observation on US patent law:

“because it’s trying to look like something it isn’t.”

and was moved to ask IANAE:

“What isn’t it?”

The same question was on my lips. So, IANAE, can you enlighten us both, perhaps?

9. 33
1234567 says:

Ping:

If it isn’t it outta be. But, to hear the Fortune 500 false marking defendants tell it, false marking with an expired patent is a “public service,” because it directs the consumer to the expired patent, thereby providing him with a blueprint for the product. Insofar as misuse is a defense to infringement (a counterclaim for false marking is not) it is unlikely that a consumer plaintiff (non-competitor) in a false marking case could or even would assert patent misuse, but a competitor / infringer / false marking counterclaimant surely would have a good case to make for patent misuse.

10. 32
ping says:

Numbers Dude,

Isn’t any use of an expired patent number (known to be expired), in a marking sense, misuse?

11. 31
1234567 says:

You patent lawyers and your slide rules are all wrong. Just ask any false marking defendant and he’ll tell you that calculating the expiration date of a patent on the spot is sheer child’s play, whereby the consumer can’t possibly be confused or misled by the defendant’s misuse of an expired patent number.

12. 30
ping says:

because it’s trying to look like something it isn’t.

What isn’t it?

13. 29
IANAE says:

But the substantive patent law of the USA, is that a Robinson or a Goldberg entity?

I’d say it’s more like those magic images where you have to cross your eyes to see what’s really there.

We have provisionals that convert into regular applications (a feature nobody ever uses), a 20-year-from-filing term that is really a 17-year-from-grant term, final rejections that are really non-final rejections with RCE fees, and a first-to-invent system that is really a first-to-file system.

It’s needlessly complex, but not for complexity’s sake in the manner of Rube Goldberg. It’s needlessly complex because it’s trying to look like something it isn’t.

14. 28
MaxDrei says:

Babel, I dare say you’re right. But the substantive patent law of the USA, is that a Robinson or a Goldberg entity?

15. 27
Babel Boy says:

Max
I think there is a distinction between a Rube Goldberg machine and a Heath Robinson machine.

Goldberg is an incredibly complex, impossible sort of machine with balls rolling down tracks, dropping onto cantilevers, activating switches and causing the rocking chair to pinch the cat’s tail, etc. Whereas, I take a Robinson machine as one that keeps breaking down if not constantly fiddled with — like most of the cars I’ve owned.

So I would suggest the USPTO is more properly referred to as a “Rube Robinson machine”.

16. 26
MaxDrei says:

No IANAE, I think I don’t mean that. A propensity to forgive is an admirable character trait, I should have thought.

No, I’m just on about balancing the rights enjoyed by the patent owner, and those enjoyed by his competitors, and musing that legal certainty fosters business confidence, which fosters wealth-creation. I want to see the USA setting a perfect example to the rest of the world, which will then strain every sinew to “Catch-up”, which in turn will be good for European patent attorneys.

17. 25
ping says:

as long as you say it wasn’t your fault?

You don’t even need to go that far, if you can say “I couldn’t help it”, it may be your fault, but you are still forgiven.

18. 24
IANAE says:

the open-ended period of general uncertainty (for Europeans, quite extraordinary) whether the owner of a patent that has lapsed for failure to pay a renewal fee is going to be able to revive it,

You mean the typically American rule that says you can weasel out of the consequences of your failure to meet your obligations as long as you say it wasn’t your fault?

19. 23
MaxDrei says:

Most, perhaps, IANAE, but what would even then remain would be (for example) the open-ended period of general uncertainty (for Europeans, quite extraordinary) whether the owner of a patent that has lapsed for failure to pay a renewal fee is going to be able to revive it, and then assert it against “infringers”.

20. 22
IANAE says:

That is, some expired patents can still bare their teeth (to the extent they have any), and a few might still be able to inflict a serious wound, for a considerable time after their expiration.

That’s got nothing to do with anything. After the patent expires, you don’t need to worry about your conduct, because nothing you can do at that time will affect your liability for infringement. The patent is powerless, you just might happen to be liable for something you did wrong a few years ago.

Adding a further interesting wrinkle is the possibility for an equitable doctrine, such as laches, to close to some degree that 6 year window of opportunity.

Sure, if you’ve relied on a representation by the patentee that he’s not going to sue you. But you’d probably be aware of that.

Most of this complexity and obscurity would disappear if the US would simply commit in practice to the 20-years-from-filing term that it embraces in theory.

21. 21
Poppa Bear says:

To enhance this analysis slightly, although it does not effect term per se, consider that the U.S. Statute of Limitations for alleging patent infringement that occurred during the term of a U.S. patent is 6 years. That is, some expired patents can still bare their teeth (to the extent they have any), and a few might still be able to inflict a serious wound, for a considerable time after their expiration.

Adding a further interesting wrinkle is the possibility for an equitable doctrine, such as laches, to close to some degree that 6 year window of opportunity.

So to the extent that “occult” means “hidden from view, concealed, and/or secret”, or possibly even “beyond the realm of human comprehension”, it just might be an apt descriptor for those seeking to know precisely when the threat of a U.S. patent has completely passed.

22. 20
MaxDrei says:

Babel, not sure I agree with “occult” although it is bizarre and opaque that you can’t tell by looking at it what a US patent means, you can’t tell by looking at any official register who its owner is, and you can’t tell when its term expires, period. Present day US patent law reminds me of a machine designed by Mr Heath Robinson. I quote from Wikipedia:

“….even to this day in Britain the name “Heath Robinson” is used as shorthand for an improbable, rickety machine barely kept going by incessant tinkering. (The corresponding term in the U.S. is Rube Goldberg, after an American cartoonist with an equal devotion to odd machinery.)”

23. 19
Babel Boy says:

Thanks, thought. These guys are great. They have gone to an immense amount of trouble to explain the system to non-practitioners. Better than Pressman in a lot of respects — and cheaper.

On this subject, double-patenting comes up a lot in CIP applications. A terminal disclaimer looks awfully appealing post-AIA. But as I understand it, a CIP gets the advantage of a term adjustment, and that would push the CIP’s term past the parent’s term. But if you file a terminal disclaimer, the CIP would die with the parent regardless of whether the CIP is entitled to term adjustment.

With the backlog, I am getting term extensions of 3 years, so the difference isn’t trivial.

With little or no likelihood of an extension, then terminal disclaimer is a no brainer for a CIP. But if the FOAM is not entered until 30+ months after filing, I’m not so sure.

Can anyone confirm that a CIP subject to terminal disclaimer does not get the advantage of a term adjustment?

Like someone said, it’s all pretty occult.

24. 18
Michael says:

I would move items 4&5 to items 1&2, they would set the base term to which PTA and PTE apply, and would eliminate the need to perform current item 1.

25. 17
Hagbard Celine says:

“Patent” means “open”, yes? The idea is that one should be able to read a patent document and determine what one is excluded from doing without infringing, yes? Except in the USA where one cannot interpret a patent independently of its prosecution history and, indeed, cannot even determine when the patent rights will expire from the patent document itself.

“Patent”? “Occult” seems more appropriate.

26. 16
6 says:

“Does anyone have a process flow-chart that they could send to me to use when determining whether an issued patent is still in force? The process includes at least: ”

8. Determine if you can find prior art with a 5 second google search and will file a reexam immediately in addition to a declaratory judgement of non-infringement/invalidity immediately in addition to possibly blackmailing the patentee for \$\$\$ to not invalidate his patent.

You always need to consider 8 first in your determination of whether or not a patent is still in force. In fact, it’s probably the first thing you should consider on first viewing a patent anyway.

27. 15
thought says:
28. 14
Paul F. Morgan says:

P.P.S. Even if a court in a final decision finds all asserted claims to be unpatentable, the patent is not rendered expired by that. So if substantially narrower claims are obtained over that prior art in a reissue or reexamination, those claims could still be enforceable against other parties, subject to intervening rights. [Assuming there was not also an inequitable conduct unenforceability decision.]

29. 13
Paul F. Morgan says:

P.S. further adding to the Byzantine complexity of the current patent term calculation statute, filing a provisional and waiting up to a year to file it as a formal application adds up to a year to the patent term.

30. 12

For 2 & 3 make sure to look carefully for PTA & PTE challenges and adjustments post-grant. Sometimes those get finally adjudicated long after issuance, and the documentation that makes it into the file wrapper is not always complete (I’ve seen inter-agency correspondence related to a PTE left out of the file wrapper; I also saw one instance where entire secrecy-order communications were omitted, with one line on the PTA calculation indicating one ever existed). I’ve found the Orange Book to be surprisingly accurate and quickly-updated for PTE.

I’ve also have more clients question bills for patent term analysis than any other service. XP

31. 11
Paul F. Morgan says:

Reissues, reexaminations, continuations, divisionals, litigations or CIP’s do not change the normal* patent term, but [correct me if you disagree] continuations, divisionals and CIPs may affect term extension PTO/applicant delay calculations for patent applications filed or re-filed (other than RCEs) on or after May 29, 2000.

*I.e., the statutory term not shortened by any terminal disclaimer, disclaimer, dedication, or non-payment of maintenance fees.

32. 10

You also need to address how each of these factors interact. A Terminal Disclaimer trumps PTA, but not PTE for the patent at issue. It can be very difficult and costly to gather all of this information, especially for patents without electronic file histories on PAIR.

33. 9

+ Add on the list payment of maintenance fees. . .

34. 8
Roger Karp says:

sarah, I have the volume set at “11”.

35. 7
ping says:

Well said sarah.

(Actually I haven’t a clue what sarah is saying, my cypher book is missing a page – but it sounds impressive)

36. 6

Maybe this will be allowed….

“ENFORCE” has nothing to do with what Ping is saying. Articulating is dangerous. But then if it’s for me to misunderstand… get over it. Keeping the Jacket is where the “VOLUME” is loudest.

37. 5
Kerry says:

I have a further point: is the term any different fot a continuation or a CIP?

38. 4
ping says:

Au Contraire Cy,

You must re-evaluate my statements – you are thinking the hype is “in force” somehow, but it ain’t – the hype is how dangerous “patenting” is (or to be more precise, the giving of a “bad” patent).

39. 3
Cy Nical says:

Does anyone have a process flow-chart that they could send to me to use when determining whether an issued patent is still in force?

I wouldn’t sweat it. According to Paul and ping, it’s only hype that leads you to believe that any of them are still in force.

40. 2
Ah says:

#7 isn’t term-related, strictly speaking. A few patents have been legislatively extended. Design patents have a term of 14 years.

41. 1
chris says:

the only other thing i do is look it up on PAIR to see if it is marked as abandoned for any reason, followed by doublechecking on the maintenance fee database to see if it’s up to date.