The United States Patent and Trademark Office (USPTO) has just issued a Notice of Allowance for your invention embodied in the Utility Patent Application (UPA) you filed years ago. Your initial reaction may be, ‘Finally! The wait was worth it.”

This blog submits that after the celebratory reaction, there is more to do than just pay the USPTO’s issue fee and focus on enhancing the exploitation of your soon-to-be patented invention. As this firm has noted in a previously published blog post, it is worthwhile to explore the benefits of filing a ‘spin-off’ patent application, known as a Continuation application, to potentially drive more business. Likewise, it is prudent to determine whether your soon-to-issue patent is entitled to a Patent Term Adjustment (PTA) and how long that adjustment should be.

As defined by the USPTO, PTA is a process of extending the term of a U.S. patent. It intends to accommodate for delays caused by the USPTO during the prosecution of a U.S. utility or plant patent application. The total PTA is an addition to the 20-year lifespan of the issued U.S. patent. PTA was established by the American Inventors Protection Act of 1999 and provides for day-for-day adjustment of a patent term (i.e., the period a patent is in force) for certain USPTO administrative delays.

For those who did wait years from the filing date of their UPA until receiving the Notice of Allowance, a PTA is likely warranted. Also, it is critical to understand that the 20-year patent term (again, the period the patent is in force) is calculated from the UPA filing date, not the issue date of the resulting patent, while the enforcement of your patent is only viable on or after the date the patent issues. Thus, if the UPSTO’s prosecution of your UPA took three years, then that 20-year patent term is effectively diminished to 17 years if there is no PTA properly secured.

The 1999 statute identified timeframes for calculating PTA. In other words, the law established periods that, if exceeded by the USPTO, entitle the patent to PTA. The two most applicable timeframes require (1) the USPTO to issue an office action within 14 months after the UPA filing and (2) respond to a reply (i.e., your Response to the office action) within four months after the Response to the office action was filed. From my 10-plus years’ experience prosecuting patent applications before the USPTO, I can confidently say that a significant percentage of UPAs filed since COVID exceed that first 14-month timeframe. Thus, a significant number of patents are potentially eligible for PTA., which is confirmed by the USPTO’s metrics. (And I suspect many readers will remember it taking well past 14 months to receive their first office action). On the other hand, from my prosecution experience, I feel that on average the USPTO is good at meeting the second timeframe of replying to an Applicant’s office action Response within four months.

The USPTO Should Automatically Determine The PTA

The above-mentioned Notice of Allowance should provide the USPTO’s calculation of the PTA your patent should be entitled to. Thus, the initial review of the Notice of Allowance needs to identify whether the USPTO-determined PTA is present as well as whether the USPTO-determined PTA is accurate. With that said, it must be understood that the PTA calculation will be reduced if by the Applicant’s delay during prosecution (“the period during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application”. The two most common ‘reduction instances’ are (1) filing the Response to an office action after the office action’s first deadline, and (2) filing an incomplete response where the response does not address all the issues alleged in the office action.

The specific formulas and other factors regarding USPTO delays or Applicant delays are beyond the scope of this blog. With that said, there is a mechanism for challenging the USPTO’s application of the patentee’s PTA rights. Most importantly, after experiencing the satisfaction of receiving a Notice of Allowance, it is important to consider whether your patent term has been improperly diminished so that your future patent exploitation can be maximized.

[View source.]