Introduction
When inventors apply for a patent in the United States, delays in the patent examination process can impact the effective term of the patent. A patent is normally valid for 20 years from the filing date of the first non-provisional application. If you file your application on January 1, 2030, no matter how long it takes the USPTO to issue your patent, the default expiration date is January 1, 2050. I’ve personally experienced patent applications that took over a decade to issue — so this is a big deal. Now imagine that you hold the patent on a blockbuster drug that does $5 million in sales daily. Every day of patent term is worth a fortune — and it seems wildly unfair that the ultimate value of your patent depends on the speed of your patent examiner.
To compensate for such delays caused by the U.S. Patent and Trademark Office (USPTO), inventors may receive a Patent Term Adjustment (PTA). This article explains what PTA is, how it is calculated, and how it is affected by a terminal disclaimer.
What Is Patent Term Adjustment (PTA)?
Patent Term Adjustment (PTA) is a mechanism provided under 35 U.S.C. § 154 to adjust the term of a patent based on delays caused by the USPTO during the examination and issuance process. It ensures that patent holders receive an extended term to compensate for certain administrative delays.
How Is PTA Calculated?
PTA calculation primarily accounts for three types of delays:
- A-Delays: These are caused by the USPTO not meeting certain statutory deadlines, such as issuing the first Office Action within 14 months of filing or responding to applicant replies within specific timeframes.
- B-Delays: These occur when the USPTO fails to issue a patent within three years of the application filing date, excluding certain applicant-requested delays or delays due to appeals.
- C-Delays: These include delays caused by interferences, secrecy orders, or appeals.
The formula for calculating PTA involves adding the days of each qualifying delay to the patent’s basic 20-year term.
Impact of Terminal Disclaimer on PTA
A terminal disclaimer is a legal document filed with the USPTO that limits the enforceable term of a patent to be co-terminous with another patent or application. It is used to overcome double patenting rejections and prevent excessive patent term extensions. Typically a non-statutory double patenting rejection says “You got a patent already and your continuation claims are substantially the same as the patent you already got. It would be unfair for you to have a second patent that lasts longer than the first one, so you have to agree to have the second patent expire when the first one does.” This was a huge deal when patent terms were 17 years from the date the patent issued. Under those circumstances, the first patent might issue 10 years before the second one, and without a terminal disclaimer you would get an extra ten years of patent term. Now that everything is measured from the filing date of the first non-provisional in the family, a terminal disclaimer has a far smaller impact (typically).
- Effect on PTA: If a terminal disclaimer is filed for a patent, any potential PTA accrued for that patent is nullified if it pushes the patent life beyond the life of the patent it was terminally disclaimed to. This is because PTA is designed to extend the term of a patent, and a terminal disclaimer limits the enforceable term.
Conclusion
Understanding PTA and terminal disclaimers is crucial for patent holders navigating the complexities of patent prosecution and term management. While PTA aims to compensate for delays, a terminal disclaimer ensures compliance with double patenting rules, with implications for the patent’s enforceable term.