For many years, the term of a patent was 17 years from its date of issuance. In 1995, in an effort at international harmonization, the term was changed to 20 years from the earliest effective filing date of the application for patent.
If the PTO issued the patent in less than 3 years, the effective term would be longer than 17 years; if the PTO took more than 3 years to issue the patent, the effective term would be less. Provisions were included in the law to adjust the patent term to account for unusual delays such as for interference proceedings, secrecy orders, or appeals.
Needless to say, delays became more and more common at the PTO and more and more patents were taking longer to issue.
In 1999, Congress passed the American Inventors Protection Act (AIPA) which provided distinct guarantees regarding patent term. Section (A) of the applicable statute provided that the term of the patent would be extended 1 day for each day that the PTO delays action on an application during prosecution after a certain amount of time. For example, patent term adjustment begins 14 months after a new application is filed if a first office action has not been mailed.
These periods are to be offset by any delays on the part of the applicant. Thus, for each day beyond 3 months from the mailing of an office action before a response is filed by the applicant, a day is deducted from the patent term adjustment. If the PTO mails the first office action 60 days after the 14 month period and the applicant files a response 20 days after the 3 month response period, the applicant is entitled to 40 days of patent term extension.
Section (B) provided that the term of the patent would be extended 1 day for each day after the end of a 3-year period after the application for patent is filed until the patent issues. Thus, if a patent issues 3 years and 100 days after it was filed, the patent is entitled to 100 days of patent term adjustment.
Due to the PTO delays and backlog, the vast majority of patents are receiving patent term adjustment, with the average being about 14 months.
The statute also contains a provision for situations where periods under section (A) overlap with periods under section (B): these periods cannot be double counted. So, if the PTO delays by 30 days after the application has been pending for more than 3 years and the patent issues 3 years and 100 days after it was filed, the period of patent term adjustment for that period is 100 days, not 130 days.
A question arose as to how to deal with situations where there was some delay prior to 3 years after the application was filed and some delay after 3 years. The PTO interpreted the statute to calculate patent term adjustment by granting the patentee the longer of the delay between the two periods.
For example, in Wyeth, the ‘892 patent was entitled to 610 days of (A) delay and 345 days of (B) delay. 51 days of the (A) delay occured more than 3 years after the application was filed and thus overlapped with period (B). The applicant was deemed to cause 148 days of prosecution delay. The PTO calculated the patent term adjustment at 462 days (610-148), using only the 610 day period because the 610 day period was longer than the 345 day period. Wyeth argued that it was entitled to 756 days (610+345-148-51 (for the overlap)).
The PTO refused Wyeth’s request for recalculation so Wyeth filed suit against the PTO. The district court granted summary judgment to Wyeth and the Federal Circuit affirmed. Both courts found the PTO’s interpretation to be contrary to the plain language of the statute.
The problem with the PTO’s interpretation is that it considers the application delayed under [the B guarantee] during the period before it has delayed.
The PTO considered any delay during prosecution to be an overlap with the delay to issue the patent within 3 years.
The PTO has been vastly undercalculating patent term adjustment. Many patents will now be entitled to additional patent term. There are, however, deadlines for filing a request for reconsideration of patent term adjustment with the PTO. This number should be checked when the applicant receives a notice of allowance and again on the date the patent issues.
Patent term adjustment is meant to compensate the patent owner for PTO delays. Patent term adjustments are harmful to the public. They increase uncertainty as to when a patent expires, they extend the limited monopoly, and they keep inventions from passing into the public domain when they should. More efficient examination is needed to decrease patent term adjustments.