Patent Term: Comparing 17-years-from-issue to 20-years-from-filing

One of the most important attributes of a patent is its term or duration of enforceability.  In 1995, the US patent system began calculating patent term based on the priority filing date of an application rather than a patent's issue date. Under the prior rule, a patent would remain in force for 17 years from the date of issue. Under the “new” system, the term is 20–years from the priority filing date. The three extra years were intended to account for a typical prosecution delay of three years. In addition, Congress added a patent-term-adjustment (PTA) provision to lengthen the patent term in instances where the USPTO unduly delayed in issuing a patent.

Study: For this study, I wanted to consider how the change has actually impacted patent term. To do this, I created a database of 50,000 recently issued patents and calculated the term under both the old and new system.  For the calculation under the new system, I added 20–years to the earliest priority date (excluding provisional and original foreign filing dates) and then added any patent-term-adjustment.  To calculate the term under the old system, I added 17–years to the issue date unless the patent had a family member (e.g., continuation application) with an earlier issue date. In that case, I added 17–years to the issue date of the family member based on an assumption that a terminal disclaimer would have been filed in the case. Because of some potential data discrepancies, I excluded the extreme 1% of results and also patents on applications filed proir to the 1995 change-over. 

Results: Most patents (64%) have a longer term under the new system than they would have been entitled under the older system. Under the new system, the median patent has a term of about 8–months longer than if the term had been calculated under the old system. For 43% of the patent, the terms are are within 1–year of what would have been calculated in the old system; and 89% are within 2–years. Of course, there are some extremes. As you might imagine, patents that benefit most under the new system are those that have the greatest patent term adjustment (PTA).  Patents in TC 1600 (Biochemistry and Organic Chemistry) comparatively fared the worst.  Those patents on average lose 11–months of patent term in the new system as compared to the old system.

41 thoughts on “Patent Term: Comparing 17-years-from-issue to 20-years-from-filing

  1. 39

    “Most patents (64%) have a longer term under the new system than they would have been entitled under the older system.”
    Well, except for a few of those submarine patents, some of whose owners gamed the system to effectively tack another decade or so onto the official patent terms.

  2. 38

    which means it must be something else.

    No. It does not. Your view is striving for cause when only correlation is necessary.

  3. 37

    Because they were the ones implicated in any submarine shenanagins.

    That’s begging the question. Implicated how?

    Sure, the PTO sometimes responds to bad press, but they took a good long time to respond to bad press about how long it takes to get a patent examined, so there must be something more to it.

    If they were “implicated in any submarine shenanigans”, they would have issued patents much more quickly even without a change in the law. The poster said their interest changed when the law changed, which means it must be something else.

  4. 35

    I asked for a CIP. Someone else called it a DIP.
    Then Council, Counsel, Gaffe, Gaff. Registration numbers are Dyslexic. Tomato tommaattoo.

  5. 33

    I’m asking why the PTO would have cared.

    Because they were the ones implicated in any submarine shenanagins.

    We do know that the Office reacts to bad press. Just look at the famous Dufas Curve.

    protect the interests of society

    Ah, the idealistic ones are always the most amusing.

  6. 32

    Ostensibly, the PTO was instituted to protect the interests of society.

    Well, yeah, but that’s not what he said. He said the PTO had an interest. I’m trying to figure out what that interest is. I can’t imagine the PTO benefiting in any way from hurrying applications along to issuance, other than collecting the issue fees that I believe they still charge. And now they get maintenance fees, too.

  7. 31

    I’m not asking why that’s important to society. I’m asking why the PTO would have cared.

    Ostensibly, the PTO was instituted to protect the interests of society.

  8. 30

    It used to be in the PTO’s interest to issue patents because the longer they delayed, the more impact patents would have on important inventions.

    What, precisely, was the PTO’s interest in not impacting important inventions?

    I’m not asking why that’s important to society. I’m asking why the PTO would have cared.

  9. 29

    The change in patent term doesn’t tell the whole story. It used to be in the PTO’s interest to issue patents because the longer they delayed, the more impact patents would have on important inventions. Now, the PTO is emboldened to make inventors fight for their patents. Eventually the inventor runs out of patent term and has no hope of enforcing exclusivity. It no longer makes sense to file in many cases. If you can, protect your invention as a trades secret…or take it to the grave with you.

  10. 27

    Now you’re just begging.

    It’s no more begging than the original filing. Besides, it’s not technically begging if you pay the list price for the service.

    The only problem in this situation is that people don’t take final rejecion any more srs than you guys accuse most examiners of.

    Well, maybe that’s because “final” is such a glaring misnomer at the PTO. There’s nothing final about it, it’s simply a check box to remind you that more fees are due. It’s not even an indication of when you may appeal your rejection to the Board.

    Compare and contrast what the good people of Europe or Japan understand by “final rejection”.

  11. 26

    “Even if it’s true that technically “you already failed to get a patent on your app,” why should it make any difference for PTA which path you choose after having technically “failed to get a patent on your app”? ”

    Because nobody likes a failure?

    Or you could just remember what the guarantee is for?

    “(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES”

    We responded that you were a failure. Now you’re just begging. Congressionally sanctioned begging, but begging no less.

    The only problem in this situation is that people don’t take final rejecion any more srs than you guys accuse most examiners of. Examination becomes a whole lot more efficient when you guys have a little fear of, oh, I don’t know, a final decision.

  12. 25

    Technically speaking, you already failed to get a patent on your app.

    No, technically speaking, I haven’t failed to get a patent until I abandon the application. It is still entirely possible to get a patent on the application post-RCE, and if it weren’t they wouldn’t need a PTA rule about RCEs in the first place.

  13. 24

    Even if it’s true that technically “you already failed to get a patent on your app,” why should it make any difference for PTA which path you choose after having technically “failed to get a patent on your app”?

  14. 23

    “Even if I’ve filed an RCE already, I would still like to be compensated if the examiner takes unreasonably long to issue a subsequent action, because that still delays the issuance of my patent and there’s still not much I can do about it.”

    Technically speaking, you already failed to get a patent on your app. Now you’re requesting further consideration. To be frank, you should just be glad that there are hardly any conditions to you recieving such.

  15. 22

    A reasonable solution would be to establish an 8 year patent term for software and computer-implemented inventions, and a 26 year term for biotech/pharma patents.

  16. 20

    Don’t know where you’re coming from.

    I think I know where you’re coming from. If you want to look like a newbie who just showed up to innocently make a point, you might try not calling me “INANE” (unless you were so clever you thought of it independently) and not shifting to such an aggressive tone so quickly in response to a silly pun about the name you presumably chose for a reason.

    I get that “We see these ghost-drafter situations now and then”, I just wish it happened less frequently in this very blog.

    Quick, somebody sick Gene on that Korpi guy – he’s bad for Gene’s business!

    I think Gene’s still waiting for his patent to issue.

  17. 18

    INANE

    Selling the public patent services based on a “Provisional Patent” is not puffery. It’s deceptive. Likely illegal. You may not be experienced enough to realize that there is no such thing as a provisional patent.

    You may have also missed the point that the PTO has not extended provisional applications to 2 years, as this guy asserts. Quinn has a long explanation of the proposed new rule. Have a look.

    But I was more interested in the question of non-registered, non-practitioners ghost-drafting applications that are filed by the inventor, which has nothing to do with puffery either.

    Don’t know where you’re coming from.

  18. 17

    Little Jackie Paper,

    Is it possible that what you read was mere puffery? I guess you’d know better than we would.

  19. 16

    A lot of times, you’ll amend in an RCE, overcome the art, and then get one dubious rejection after another thrown your way. Each round bleeds more term, which you can’t get back because of the RCE.

    This is why it helps to (1) perform a search of the prior art before filing, and (2) conduct an interview with the examiner (preferably in-person) after receiving the rejection. (1) helps you head off such rejections in drafting claims, and (2) helps you avoid future such rejections.

  20. 15

    What is that Korpi “video course” thing all about? I can’t find this guy on the USPTO registry, yet he says he is writing provisionals for people, and he is offering “free” 15 minute consultations. Could be a real OED problem here.

    This from his website:

    “You have come to the right place, I answer ALL those questions and more and show you all you need to know to get your idea ready so you can mark it Patent Pending with a Provisional Patent.”

    and this

    “You may not have even heard of the term “Provisional Patent”… It is a VERY IMPORTANT legal document offered by the USPTO (U.S. Patent and Trademerk Office). A Provisional Patent is designed for folks JUST LIKE YOU.”

    Yeah, I haven’t heard of the term “provisional patent” either, but I’ve heard of the term “come-on.”

    This guy is trying to sell a video for obtaining a “Provisional Patent.” “60 day “guarantee.” Just $47. Smells like fish to me. Doesn’t the AIPA address this sort of thing?

    If I am not registered w/ the PTO and I ghost-draft a provisional or full application for someone, is that practicing law without a license? We see these ghost-drafter situations now and then.

  21. 14

    PTA helps some, but the RCE cutoff undermines its effectiveness considerably.

    The RCE cutoff is one of a few quibbles I have with the PTA calculation, where it pretty much decouples the actual PTA from the actual delay caused by one party or the other to the point that it seems arbitrary.

    Even if I’ve filed an RCE already, I would still like to be compensated if the examiner takes unreasonably long to issue a subsequent action, because that still delays the issuance of my patent and there’s still not much I can do about it.

    I understand the theory that a well-drafted application should be either clearly allowable or clearly worth abandoning after two good rejections. I don’t think it’s really workable in practice. It’s a semi-reasonable approximation for the purposes of final action practice, but I really don’t see why that should give the PTO carte blanche for subsequently delaying its actions. Their delay is no less harmful merely because there has been an RCE at some time in the past.

  22. 12

    Anonymous

    Who said anything about amendments? You just threw that in so you could rant.

    A lot of times, you’ll amend in an RCE, overcome the art, and then get one dubious rejection after another thrown your way. Each round bleeds more term, which you can’t get back because of the RCE.

    The smart thing is to appeal rather than RCE. I’ve got no problem with that. But I’m not sure the PTO likes that workflow model.

  23. 11

    Remember, nothing stops the examiner from throwing one reference after another at the applicant at the expense of huge amounts of the applicant’s patent term.

    So the additional references thrown at the applicant are dubious, but the additional amendments thrown at the examiner are NOT dubious?

    If you care about the RCE issue, why don’t you leave the claims in original form and appeal? If you actually need to amend the claims, stop complaining about the RCEs, come up with a meaningful amendment, and interview the case.

  24. 10

    The submarine patents are a problem, as Patent Dude points out. But how do you protect the inventor against one dubious rejection after another, each of which costs about 4-5 months to overcome? PTA helps some, but the RCE cutoff undermines its effectiveness considerably. Remember, nothing stops the examiner from throwing one reference after another at the applicant at the expense of huge amounts of the applicant’s patent term.

  25. 9

    Dennis, thinking about the small-molecule pharma field, it’s interesting that you say patents from group 1600 lost about 11 months of patent term in the change to 20-years-from-earliest-filing.

    As Bob Armitage of Eli Lilly (among others) has pointed out, and I can know from my own practice, under the 20-year system, some otherwise promising molecules (for treating cancer or chronic diseases like Alzheimer’s) aren’t being developed because the amount of time necessary to bring those molecules through the FDA approval process eats too much into the patent term. Even the potential 5 year PTE under Waxman-Hatch isn’t sufficient to compensate. In contrast, under the 17-year system, patent applicants could in principle delay the issuance of their patent until a later point in the FDA approval process, leaving the incentive to develop the new drug in place.

    The recent Cancer Research Technology v Barr case is illustrative: CRT didn’t really begin substantive prosecution of its patent until 1993, about 10 years after it had been filed, once CRT had a strategic partner to help get the drug through the FDA. This wasn’t a Lemelson wait-until-the-technology-is-entrenched-then-let-the-patent-issue-and-sue-the-entire-industry situation; without the ability to delay the issuance of the patent, the drug never would have hit the market.

  26. 8

    Agreed with Patent Dude. Unfortunately, you’ll never see people like Mr. Riley make such an admission, as his view is clouded by his overt lobbying for independent inventors.

  27. 7

    Paul Morgan’s comments are spot-on. This isn’t about small inventors versus evil corporations. It’s about incentives. The old system clearly incentivized delay, late-claiming and necessitated the creation of the “prosecution laches” defense. Several patents in my own practice have priority dates in the mid-1980s but still have several years left because of continuations that were filed in the mid-1990s just before the changes went into effect. It is perverse to think that patents that were filed so long ago — before many of junior IP attorneys with whom I work were even born — still have substantial term left today.

  28. 6

    Re: “the change caused a shift in the balance of power between inventors and the USPTO. This shift has led to inventors, especially independent inventors being blackmailed into accepting less coverage then they may be entitled to or being subjected to endless inane rejections until they run out of money.”

    The patent term change had nothing whatsoever to do with THAT complaint. Nor is that complaint at all unique to independent inventors. The usual, and far more appropriate, complaint department candidates for that are the former PTO Director from the prior Administration, and the Supreme Court, in their KSR decision.

  29. 5

    The prior patent term system actually rewarded those who delayed patent application prosecution and patenting, which was not in the public interest, and contrary to the intent of the patent system.
    Changing U.S. patent terms to 20 years from their earliest claimed filing date [plus ample term extensions for PTO delays] was tied to TRIPS legislation, and provided harmonization with other patent systems. A major additional motivation was the national notoriety by that time of the numerous Lemelson patent applications pending in the PTO for 25 or more years with multiple serial continuations [and claim changes to cover subsequent products of others] before surfacing for 17 years of patent term.

  30. 4

    Now the USPTO has extended the provisional application to 24 months so does this now give us 18 years or 21 years? I know the biggest obstacle is actually getting a patent filed! Most folks do not know you can FIRST get a provisional and now we have 2 years before we have to pay the hefty fees to get our non provisional. This allows us to get monies in to get our patent. This extension is a generous gift from the USPTO in my view! See this link: link to filepatentapplications.com to see how you can get your provisional patent application filed in a matter of hours!

  31. 3

    “Also, the change caused a shift in the balance of power between inventors and the USPTO. This shift has led to inventors, especially independent inventors being blackmailed into accepting less coverage then they may be entitled to or being subjected to endless inane rejections until they run out of money.”

    Well, at least the public got something from the new system. Besides getting rid of a lot of submarines.

    ” That was fifteen years ago and today the same interests are still working hard to turn the patent system into a kings sport.”

    I agree, it is a shame that they haven’t done a better job. For how long shall the Sport of Kings be accessible to the common man? Seriously, they need to change it sooner rather than later.

    “They continue to steal small entities patent property rights on the grandest of scales while demonizing their victims as mythical patent trolls.”

    I know right? Dam trolls.

  32. 1

    This study is good as far as it goes but to be complete it should examine the impact on the most important inventions. In that case I suspect that the change came at considerable cost.

    Also, the change caused a shift in the balance of power between inventors and the USPTO. This shift has led to inventors, especially independent inventors being blackmailed into accepting less coverage then they may be entitled to or being subjected to endless inane rejections until they run out of money.

    As long as I can remember big corporate interests have been trying to make changes to the patent system to disadvantage upstarts. The 20 year change was one move, added to the GATT enabling legislation by hook and crook. That was fifteen years ago and today the same interests are still working hard to turn the patent system into a kings sport. They continue to steal small entities patent property rights on the grandest of scales while demonizing their victims as mythical patent trolls.

    Ronald J. Riley,

    President – http://www.PIAUSA.org – RJR at PIAUSA.org

    Other Affiliations:
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.patentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

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