How the USPTO Revised Patent Term Adjustment Rules

Patent term adjustments are an important part of the patent process.  Any delays caused by you or the USPTO can affect the term (how long) your patent can be enforced.

The United States Patent and Trademark Office (USPTO) revised the rules of practice to implement changes to the patent term adjustment provisions. The new rules reflect recent technical corrections to the Leahy-Smith America Invents Act (AIA).

Section 1(h) of the AIA Technical Corrections Act revises the date from which the fourteen-month patent term adjustment period is measured, and clarifies the date from which the three-year patent term adjustment period is measured, with respect to international applications filed under the Patent Cooperation Treaty. Under the Final Rule, the fourteen-month patent term adjustment period and the three-year patent term adjustment period will both be measured from the same date: the date on which an application was filed under 35 U.S.C. 111(a) in an application under 35 U.S.C. 111; or the date of commencement of the national stage under 35 U.S.C. 371 in an international application.

Section 1(h) of the AIA Technical Corrections Act also revises the provisions for notifying applicants of patent term adjustment determinations and for requesting reconsideration and judicial review of the USPTO’s patent term adjustment determinations and decisions. Under the Interim Rules, the USPTO is no longer required to provide a notice of a patent term adjustment with the notice of allowance. Instead, it will be indicated on the patent.

The rules still require that any request for reconsideration of the patent term adjustment be filed within two months of the grant date. However, this two-month time period may now be extended by an additional five months, permitting an applicant to request reconsideration of the patent term adjustment indicated on the patent as late as seven months after the date the patent was granted.

The effective date of the changes was April 1, 2013.

How Can I Help?

If you have a recently granted patent it is important that you check your patent term to make sure that you are receive all the protection that you are entitled to, please contact me for a free 30 minute consultation if you need assistance determining your patent term at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

How Long is My Patent Term?

After you have spent all the time an effort to get your patent granted, determining the length of  time your patent rights are valid is the next step.

Normally, your patent term runs for 20 years from the filing date of the earliest U.S. application to which priority is claimed.  However, that isn’t the whole story.  Various issues can arise during the prosecution of your patent, so adjustments are made to the patent term.

As you might expect, this can make determining how long you patent rights exist a bit more difficult.
Fortunately, the U.S. Patent and Trademark Office recently announced a new tool for patent holders. The online calculator enables members of the public to estimate the expiration date of a utility, plant, or design patent.
The tool can help determine if the patent term has been shortened or extended by a number of factors, including:
•    Type of application (utility, design, plant);
•    Filing date of the application;
•    The grant date of the patent;
•    Benefit claims under 35 U.S.C. § 120, 121 or 365(c);
•    Patent term adjustments and extensions under 35 U.S.C. § 154;
•    Patent term extensions under 35 U.S.C. § 156;
•    Terminal disclaimer(s); and
•    Timely payment of maintenance fees.

The USPTO’s new calculator tool “provides a best estimate of a patent’s expiration date, based on a comprehensive list of factors than can be found in USPTO records.”

The calculator can be downloaded here.

How Can I Help?

While the calculator can provide valuable information, I recommend that individuals and companies still consult with an experienced patent attorney to determine if a patent is still in force. The USPTO also agrees, noting, “Before relying on an expiration date, individuals should always carefully inspect all relevant documents available through the USPTO, court records and elsewhere, and consult with an attorney.”

So, if you, or someone you know, need help with determining patent terms or any other Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman