Patent Term Adjustment for Fun and Profit

The phrase “Patent Term Adjustment” elicits two divergent reactions from patent prosecution specialists.  PTA is wonderful because it provides a strong counterbalance to USPTO delays. On the other hand, PTA rules are complicated and it is easy for a practitioner to unintentionally lose-time.

In general, the PTA is an attempt to retain a patent term of approximately 17–years from issuance.  Under the rules, the statutory 20–year term is increased for certain PTO-related delays and is decreased for other Applicant-related delays.

Scott Kamholz of Foley Hoag has written a great guide to PTA entitled “Patent Term Adjustment for Fun and Profit.” The guide was originally published this Fall in IP Today, but is now available on Patently-O: File Attachment: PTA for Fun and Profit.pdf (147 KB).

Highlights of the article include:

• CIP’s are more likely than continuations to capture PTA;
• Extensions, non-compliant responses, and RCEs all decrease the PTA;
• Late filing of formal drawings decreases PTA;
• Written restrictions count as an office action — thus, consider making oral elections of species;
• Express Mail or Fax improves PTA;
• Terminal disclaimers are problematic;
• Examine the PAIR system for docketing errors;
• Appeal rejections;
• Do not file papers after allowance;
• Ask questions!

At some point, this may become moot as the PTO is considering simplifying the PTA.

Comments

[j]

One nit pick:
I think the last two words in the excerpt below should be "from issue".

"In general, the PTA is an attempt to retain a patent term of 17–years from filing."

[small guy]

PTA is indeed a wonderful thing !

I just got mine adjusted for 3 (!) years.

The application was just sitting at the PTO for almost 4 years before the First Office action was issued (I guess there were no takers at the PTO, as it was a complcated subject matter on the boundary between 2 disparate fields -the application was reassigned to a different examiner at least once, maybe twice...)
After the first office action (partial allowance) and the quick examiner interview (cost me a few grand to bring my lawyer to DC) it only took 4 month to get a complete allowance with 12 more claims (including 2 very broad independent claims) added and allowed by the examiner without further discussion...
Now I have my sweet little revenge...

Can anyone do better than 3 years ? :-)

[Dennis Crouch]

Typo fixed.

[Scott E. Kamholz, M.D., Ph.D.]

Here are a couple of questions: (1) if a patentee fails to pay a maintenance fee, will the PTA be tacked on when the patent then expires, or is the PTA available only if the patentee makes all required maintenance fee payments? What if the final maintenance fee for the patent comes due during the period of PTA (for example, if the patent is a continuation with only twelve years of "natural" term)?