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patent applications

There are two ways to file  patent applications:

  • Provisional patent application – an informal patent application filed with the USPTO for 12 months to protect the patent from being copied before the non-provisional application is filed 
  • Non-provisional patent application – a formal patent application filed to get utility patent rights granted by the Court 

When a patentee files for non-provisional patent application, it is reviewed and if accepted, the patent owner is granted exclusive rights to the patent for a term of 20 years. However, there can be adjustments to the term depending on various factors such as the filing date and the delays in processing the application. 

The USPTO gets over 500,000 patent applications each year, with most of them being non-provisional applications for utility patents. Therefore, the processing time for each can vary. Another point to note is that the patent filing date of the provisional application is not considered in the final term of 20 years, only the non-provisional application date is taken as beginning of the patent term. The 20-year period does not apply to design patents. 

How is the Patent Term Calculated?

The 20-year term date is calculated from the filing date of the non-provisional application. But the Court allows for Patent Term Adjustment due to delays by the patent applicant or the patent office. For example, if a patent applicant submits a response or information on a date later than the one required by the patent office, those days will be subtracted from the official patent term. On the other hand, if the delay is caused by the patent office, those days will be added to the patent term. 

Another instance where the patent term can be shortened is if the applicant fails to pay the legal fees required throughout the filing patent process. Failure of meeting your patent process claim fees can even lead to your patent claim expiring before it’s processed. 

The current laws of patent claim application processes state that an initial examination of a patent application must occur within 14 months of the filing date. (Type A) Otherwise, the delays are added to the patent’s term date. In case of delays in a patent issuance, if the delay is more than 3 years, the days after that are added to the patent term after formal issuance. (Type B)

The following case explores Patent Term Adjustment in more detail. 

Weyth v. Kappos 2009-1120 (Fed. Cir. Jan. 7, 2010)

In the Weyth Case, the Patent Office calculated both Type A and B delays to a total of 955 days. Type A delays refer to term delay before the patent is issued, and Type B is the issuance delay for the patent grant. 

In Weyth’s case, Type A delta was 610 days and Type B was 345 days. According to the Patent Office’s laws, if the type A delays occur after 3 years, then only the type B delay days will be counted. 

The Wyeth Case had 51 days in Type A that occurred after 3 years. There was also a delay caused by the patent owner of 148 days. Therefore, the overlap of 51 days after the 3 years and 148 days caused by the patentee were deducted from the patent term adjustment date. Wyeth was granted a total term adjustment of 756 days (955-51-148) with the overlapping days of type A and the delay caused by the patent owner. 

Conclusion

The above case shows how various delays caused during patent applications during processing and issuance can affect the patent term. There can be many factors that lead to delays in application processing and grants. This could have a negative impact on your final patent term if you are responsible for causing the delay due to maintenance fees or other legal reasons. Therefore, seek guidance from your patent attorney on this subject to avoid unnecessary deductions to your patent term adjustment. 

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