Fredrikson & Byron, P.A. 

Patent Term Guarantee

By Eric J. Snustad   Bio   email 
Fredrikson & Byron, P.A.

 

A number of significant changes in U.S. patent law are currently being implemented into our patent system.  One of these changes seeks to assure patent applicants that U.S. patents will enjoy a patent term that is not unfairly reduced by unreasonable delays on the part of the U.S. Patent Office.  As inventors and patent managers, you are no doubt aware that it can take a long time to prosecute a patent application.  You may also be aware that the basic term of a patent expires 20 years after the initial application is filed.  Thus, the longer it takes for an application to issue (i.e., the longer an application is pending), the shorter the term of the resulting patent.  Moreover, delays by the U.S. Patent Office can contribute significantly to the overall pendency of an application.  Thankfully, some delays on the part of the Patent Office will no longer detract from the term of a patent.

The Patent Term Guarantee Act of 1999 provides a number of bases for increasing the term of a patent that issues from an application filed on or after March 29, 2000.  The two primary bases that will result in term extensions are the following: (1) when the Patent Office fails to act on an application within certain periods of time; and (2) when an application has a pendency of more than three years before issuing as a patent.

The first basis guarantees that applicants are not punished for certain delays caused by the Patent Office.  Applicants are entitled to day-for-day extensions of patent term when the Patent Office fails to take specified actions within defined time frames.  For example, a term increase will be provided when the Patent Office fails to provide a first Office Action within 14 months after an application is filed.  Applicants are also entitled to a term extension when the Patent Office fails to respond to a reply from the applicant (e.g., a Response to an Office Action) within four months.  Further, a term increase will be provided when the Patent Office fails to issue a patent within four months after the issue fee has been paid.

The second basis guarantees that diligent applicants receive a minimum patent term of 17 years from issuance.  Any patent that issues from an application that has endured a total pendency of more than three years is entitled to a day-for-day term extension for all pendency time in excess of three years.  As you might expect, this extension is subject to a number of limitations.

            The new laws also raise the bar for patent applicants to promptly prosecute applications.  Specifically, any term increases to which an applicant would be entitled under the new laws will be reduced by any lengths of time that the applicant failed to engage in “reasonable efforts” to conclude prosecution.  For example, filing a reply to an Office Action more than three months after the mailing date of the Office Action will be deemed a failure to engage in reasonable efforts to conclude prosecution, unless it can be shown that the applicant exercised due care but was unable to respond within three months.  The rules list numerous other examples of conduct that would cause a patent term increase to be reduced as a result of delay on the part of the applicant.

The new rules make it increasingly important for patent attorneys and inventors to work together to avoid conduct that will be considered a failure to engage in reasonable efforts to conclude prosecution.  Hopefully, the net effect of the rules established by the Patent Term Guarantee Act will be increased responsiveness on the part of both the Patent Office and patent applicants.

© 2000 by Eric J. Snustad


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