The Patent Term Adjustment (PTA) provisions (codified in 35 U.S.C. § 154, effective May 29, 2000) were enacted to limit the loss of patent term due to Patent Office delays. The PTA statute includes the URAA extension provisions outlined above, and also grants patent term extensions if the Patent Office fails to meet certain internal timelines during the examination process.
For example, if the Patent Office takes more than fourteen months to issue a first Office Action, more than four months to issue a subsequent Office Action, or more than four months to grant a patent after the Issue Fee is paid, PTA begins to accrue in the patent applicant’s favor. Importantly, the statute also requires deductions from any extension period to account for times when the patent applicant “failed to engage in reasonable efforts to conclude prosecution.”
Examples of common PTA pitfalls and strategies for avoiding them are outlined below. By becoming familiar with these rules and adopting strategies for avoiding PTA deductions, patent owners can enjoy the full benefits of the PTA provisions, thereby maximizing the life of their patents and, hence, maximizing patent value.
Filing a Preliminary Amendment within one month of an Office Action/Notice of Allowance will result in PTA deduction if the Examiner has to issue a supplemental Action/Notice of Allowance.
PTA Strategy: File Preliminary Amendments as soon as possible after an application is filed. Consider calling the Examiner to make sure an Action is not about to issue, and see if the Action can wait.
Filing a response more than three months after the relevant Notice or Action will result in PTA deduction, even if the response period is properly extended. PTA also is reduced if a deadline falls on a weekend or federal holiday, and the response is not filed until the next business day.
PTA Strategy: File responses at the three-month deadline whenever possible. If a response deadline falls on a weekend or holiday, file it on the preceding business day, even though the Patent Office rules permit filing on the next business day.
Filing a supplemental response will result in PTA deduction.
PTA Strategy: Minimize the number of supplemental responses filed. Consider calling the Examiner to determine whether the issue can be addressed in response to the next Action or resolved by an Examiner’s Amendment. If an Examiner suggests an amendment to allow the application, ask him/her to issue an Examiner’s Amendment.
Filing an Information Disclosure Statement (IDS) after the first Office Action will result in PTA deduction, unless the IDS is filed with a response or the submitted information was cited by a foreign patent office less than 30 days previously.
PTA Strategy: File IDSs well before the first Office Action. If an Office Action is pending, wait to file the IDS with the response. Advise foreign patent attorneys of the 30-day deadline, to ensure that foreign-cited references can be submitted within that time frame.
Filing an Amendment after a Notice of Allowance has issued will result in PTA deduction.
PTA Strategy: Ask the Examiner to make the correction by an Examiner’s Amendment. If the correction is a minor one that is supported by the prosecution file history, consider making the correction by a Certificate of Correction after the patent has issued.
Patent owners who are aware of the different types of patent-term extension provisions can implement strategies to take advantage of these provisions and maximize the terms of their patents.
Such strategies are particularly important to biotechnology and pharmaceutical companies whose patents often continue to demonstrate significant value at the end of their terms.