Understanding patent term adjustment is one of the trickiest task inventors face while filing for patent grant. While some confuse it with patent term extension, the others don’t even know what it means. But patent term adjustment rules are not a rocket science to learn. With little focus and well explanation, you can easily understand what it means. This is what we have brought you in this article.
If you wish to know more about PTA with ease and clear explanation, this article is the place for you. We have tried to explain you the fundamentals of PTA in a easy to understand way. So read till last.
Also read: Patent Watch
What is PTA and PTE?
PTA stands for Patent Term Adjustment and PTE stands fir Patent Term Extension. Though both similar in their meaning, but actually they are not. So what is the difference between them? Read further to know your answer.
Patent term adjustment cares for delays that happen during the patent prosecution process after application filing with the USPTO. It adds the time lapse during prosecution to the term of the patent.
After Uruguay Round Agreement Act (1994), the term of patent was modified with effect from 8june1995. Now patent term adjustment rules states that the term of patent is 20 years from date of filing of the national patent application. This replaced the earlier provision which stated that the term of the patent is 17years from date of grant. Thus, onus of completing the quick prosecution of patent now lies with the PTO. Now within 3 years the PTO will have to conclude the patent prosecution process. If any delay happens during patent prosecution it will be added to patent term issued by statutory body like PTO.
On the contrary, Patent Term Extension (PTE or Hatch-Waxman Act, 1984) is continuing well before onset of PTA calculator. It is also called as “The Drug Price Competition and Patent Term Restoration Act”. It was especially but not exclusively for drug and food patents. Unlike PTA rules, PTE makes up for the time lost in total patent term during marketing approval process. It also brings balance among the interests of original and generic drug manufacturers.
Thus. you can call PTE that accounts for the regulatory review delays happening in commercialization of patent. While PTA that accounts for delays happening during prosecution of the patent.
Also read: PCT Patent definition
How to calculate PTA (Patent Term Adjustment)?
We hope by now you must have got the idea what patent term adjustment means. So, the next thing that matters most is to how to calculate PTA? To know the answer keep reading further.
Calculating Patent term adjustment is a simple task to achieve. There are 5 major components which PTA calculators use to find the actual patent term of your patent. These components are taken into account arithmetically to give the term of your patent. It is shown below:
Thus, the 5 elements which are essential in calculating PTA are:
- A-delay
- B-delay
- C-delay
- Applicant’s delay
- Overlap
Hence, PTA = (PTO Delay A + PTO Delay B + PTO Delay C – Overlap – Applicant’s delay).
Here, PTA>=0 and PTO delay corresponds to delay by Patent/Trademark Office.
A USPTO PTA calculator uses these elements while calculating patent term adjustment for a patent. Lets read all these elements sequentially:
A-delay (35 USC 154(b)(1)(A))
This is the delay that happens from PTO side during patent prosecution, i.e. the examiner and issuing office. You can easily remember it as fourteen triple four PTA calculator rule, i.e. 14-4-4-4 rule. It says, 1st office action by PTO is to take place within 14 months of the application filing date. Next 4 means, the examiner must respond within 4 months of office action response of applicant. The second 4 says, if applicant appeals, the examiner needs to respond within 4 months to it. The last 4 says, PTO i.e. the issuing office should issue the patent within 4 months of payment of issue fees. Failing the given time limit, there will be a delay every day upon the actual patent term.
B-delay (35 USC 154(b)(1)(B))
This USPTO PTA calculator rule makes PTO accountable to complete patent prosecution within 3 years of patent filing. Failing the given time limit, there will be a delay every day upon the actual patent term. But B-delay in USPTO patent term calculator comes with certain exceptions. The time delay that occurs due to these exceptions during patent prosecution does not adds for calculating B-delay.
Few exceptions to B-delay while calculating patent term adjustment are interference, derivation proceeding, secrecy order. The other exceptions include, Request for Continued Examination (RCE), and review by Patent Trial and Appeal Board (PTAB) or court .
C-delay (35 USC §154(b)(1)(C))
The exceptions that were not accounted for time delays in B-delay are taken into account in C-delay. It takes into account instance delays due to interference, derivative proceedings, secrecy order and patent appeal at PTAB. But such exceptions are valid only when their outcome is in the favor of the applicant. Hence, C-delay fills the gap occurring in PTA calculation due to exceptions in B-delay. But it is only when appeal for interference is successful. A successful appeal is one when at least one rejection is reverted in favor of the applicant. However, time delay due to RCE is not added by USPTO PTA calculator in B-delay.
Applicant’s delay (35 USC §154(b)(2)(C) & 37 CFR 1.704)
It is more of an ethical approach for calculating patent term adjustment by PTA calculator. However, unlike previous elements, where USPTO was having the onus for taking time delays into account for PTA calculation. Here, it is expected that the applicant also respects the time constraints. Hence you also need to cooperate in timely completion of the patent prosecution. Else, there will be delay in patent grant and it will effect the patent term of the patent.
There can be various factors due to which applicant delay may happen during US patent term calculation. The most common type of applicant delay is when the applicant doesn’t responds within 3 months of the office action. The applicant can get extension too, which is about 6 months to reply to office action. This requires the applicant to pay a fees also. However, if the applicant fails to respond in 6 months then the application gets abandon.
One thing interesting to note is applicants delay i.e. negative delay cannot be greater than total positive delay (A+B+C). It is because as per Patent term adjustment rules, the PTA cannot be negative. Thus, in case applicants delay exceeds total positive delay, the patent term will be same and no deduction will take place. Thus, PTA calculation will be always positive. Further, the patent term can only be increased or remain same, but can never decrease.
Also read: Patent drafting: How to do it?
Overlap delay in Patent term adjustment (35 U.S.C.154(b)(2)(A))
You must be thinking, these are all the things to take into account while studying, how to calculate PTA. However, you are partially right, what if two or more similar positive delays occur together? Will you be getting benefits of both delays? No, it is not the case, in such situations the applicant will not get double delay addition. Instead, you will get benefit of only one duration.
How Patent Paralegal Force helps in calculating Patent Term Adjustment?
Patent term simply means the time period during which patent grant remains valid. Thus, you as a patent owner get the exclusive rights over the patent during its entire term. Thus, you need to be highly attentive while calculating patent term adjustment to exercise your patent grant rights. You need to device right strategies that can enhance the patent term of your invention. This is where our, i.e. “Patent Paralegal Force” helps becomes worthy for you.
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