• Patent Term Guarantee
  • May 5, 2003 | Author: Eric J. Snustad
  • Law Firm: Fredrikson & Byron, P.A. - Minneapolis Office
  • Significant changes in U.S. patent law currently are being implemented into the patent system. One of these changes seeks to assure applicants of a patent term that is not unfairly reduced by delays on the part of the U.S. Patent Office. Inventors and patent managers are no doubt aware that it can take a long time to prosecute a patent application. Currently, 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 before a patent is actually "granted") the shorter the term of the resulting patent. 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 when: (1) the Patent Office fails to take specified actions on an application within certain time frames; and/or (2) an application has a pendency of more than three years.

    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 their patent term when the Patent Office fails to take specified actions within defined time frames. For example, a term increase will be provided if 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 if the Patent Office fails to respond to a reply from the applicant (e.g., a Response to an Office Action) within 4 months. Further, a term increase is provided if the Patent Office fails to issue a patent within 4 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, subject to limitations.

    The new laws also raise the bar for patent applicants to promptly prosecute applications. Any term increases to which an applicant would be entitled under the new laws will be reduced by the length of time 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 its mailing date will be deemed a failure to engage in reasonable efforts to conclude prosecution, unless it can be shown that the applicant was unable to respond within the three month period in spite of exercising "all due care." 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 especially 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 effect of the new rules will be increased responsiveness on the part of both the Patent Office and applicants.