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Patent Terms on Steroids

Patent Terms on Steroids I was recently asked a question from one of my friends/clients from Israel that made me go “huh?”. It amazes me, and probably one of the reasons I dig this career so much, how after over 25 years of being in this field, I can get a question launched at me that I totally have no clue how to answer. Of course, it may just be that I am not as intellectual as my colleagues, or maybe too distracted from dealing with kids, family, and my Taylor 615CE.
But whatever the reason, I did not know the answer. And so, I figure there may be some other family loving, guitar playing, egg raising patent attorney out there that may be equally intrigued by this question.

The Scenario Here is the scenario, we have a notice of allowance for an application which provides a Patent Term Adjustment of 1337 days! Well over 3.5 years, nothing to sneeze at. In pondering if they want to file a continuation, my friend poses the following question: Does the Patent Term Adjustment also apply to a continuation application? The short answer is no, but …

Continuations and Patent Term Adjustments – Figured out Under 35 USC 154(a), ignoring all of the Uruguay Round Agreements Act stuff which is on the brink of being totally irrelevant, that the term is 20 years from the filing date or, the earliest priority date based on another non-provisional application.

35 USC 154(b)(1) provides the actions that may result in the adjustment of a patent term. The language states that “if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to” meet its self-imposed obligations, the term of the patent shall be extended 1 day for each day of delay caused by the Patent Office.
At 35 USC 154(c), for continuation applications, the term of a patent is 20 years as provided in 35 USC 154(a).

Now, if I were drafting 35 USC 154, and quite frankly I am really glad that I was not involved, I would have had 35 USC 154(c) state that the term of a continuation patent is 20 years as provided in 35 USC 154(a), adjusted by any days necessary due to delays by the Patent Office as provided in 35 USC 154(b) but, shall not include the patent term adjustments of any patent to which the continuation claims priority. I just think it would have been clearer, more precise, and may save an hour or so of an attorney’s time, late at night, trying to figure out the answer posed by a friend in Israel. However, upon a careful reading of 35 USC 154(b)(1), and remembering that a very short entry in the MPEP at 201.04(a) states “’Original’” is used in the patent statute and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.” So, the fact that a continuation is considered to be an original, it logically follows that 35 USC 154(b) also applies to the continuation.

However, what is totally absent is a statement that makes it clear that patent term adjustments of the parent application do not apply to continuations. But, after a call to our wonderful USPTO legal department (disclaimer – actually I like the USPTO legal department, they are a great resource for getting good answers once you get to them and dodge the Inventors Help Desk) it was made quite clear to me that 35 USC 154(b) states if the issue of “AN” original patent is delayed, not “an original application and its parent”, … the term of “THE” patent shall be extended … .

My point – it still is not EXPLICIT, although the USPTO legal department certainly disagreed. Their point was each patent stands on its own. And, I have to admit, I follow their reasoning. The code says the term of a continuation is 20 years from the filing date or priority date and it can receive a patent term adjustment. It does not say it is 20 years from such date adjusted by any patent term adjustment of any parent application so why would I assume that it is, or hope that it is?
Question posed to you – is this equitable?

Suppose you file an original application, the USPTO delays the prosecution greatly, and you end up with a large patent term adjustment, say 1337 days as a random example. The delays were primarily due to the application getting sucked into the appeals black hole for several years. The appeal is won, and the notice of allowance is received. Typically, many inventors wait to file a continuation until near the end of prosecution of the parent. I mean, why would you file two applications that may be doomed for abandonment rather than wait until you get a positive indicator and THEN move forward. So in essence, the delays caused by the Patent Office, although not a bar on the filing of the continuation, certainly result in a delay of the typical continuation filing. So why shouldn’t the continuation, for which its filing is logically delayed because of the slow processing of the USPTO, get the benefit of that patent term adjustment, plus any additional patent term adjustments due to the examination of the continuation? Inventors are at an unfair advantage here. The USPTO forces their hands, or at least sets up a scenario that strongly urges inventors, to file continuations prior to knowing what the results of the examination of the parent application will be. I claim “bad form”.

Relationship of Terminal Disclaimers and Patent Term Adjustments Okay, one more issue to fully round out this blog entry. What is the effect of a Terminal Disclaimer with regard to patent term adjustments? 35 USC 154(b)(2)(B) states that “No patent term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.”

In essence, what this means is that if you file a continuation application that is then subjected to the filing of a terminal disclaimer (i.e., to obviate a provisional double patenting rejection of a pending second application or a double patenting rejection over a prior patent), then the expiration of the continuation application is tied to the “statutory term” of the parent application. The language in the USPTO forms state:

“The owner …. hereby disclaims … the terminal part of the “statutory term” of any patent granted on the instant application which would extend beyond the “expiration date” of the full statutory term of any patent granted on” the parent application.

What is the statutory term? Although the exact wording “statutory term” is not used, 35 USC 154(a)(2) defines the term of a utility patent – or the statutory term - as 20 years from the filing date or the 35 USC 120, 121 or 365(c) date. The adjustments to the terms as outlined in 35 USC 154(b) are adjustments to the statutory term, but does not modify the definition of the statutory term. The statutory term is still 20 years from the filing date.

What is the expiration date? The term “expiration date” is clear, it is when the patent expires (ignoring failure to pay maintenance fees, etc.). Thus, the expiration date incorporates the statutory term as augmented by the patent term adjustment.

Now, let’s revisit the terminal disclaimer language to see what it actually means. When you execute a terminal disclaimer for a continuation application, you disclaim any portion of the “statutory term” of the continuation that would extend beyond the expiration date of the parent. This means that the continuation that is subject to a terminal disclaimer does not get the benefit of the patent term adjustment for the parent application. Further, it also means that the continuation does not get the benefit of a patent term adjustment resulting from USPTO delays during the examination of the continuation application!

Thus, when a terminal disclaimer is filed for a continuation application, the expiration of the continuation is set to the end of the statutory term of the parent application. Any terminal portion of the continuation application that would extend beyond the statutory term of the parent is disclaimed. Thus, the continuation does not get the benefit of the patent term extension of the parent application and, it does not get the benefit of any patent term adjustment that should rightfully be due the continuation due to Patent Office delays.

Note, I personally believe that this is not how it should be interpreted but, based on the text in 35 USC 154 and countless calls to the USPTO legal department, this is what I have been told. Logically, it seems to me that the continuation application should get the benefit of any patent term adjustments to the extent that they do not exceed the patent term adjustment of the parent case. For instance, if the parent case has a patent term adjustment of 150 days but the continuation application has a patent term adjustment of 300 days, then the continuation should expire along with the parent application – 150 days beyond the statutory term. A final note is that the USPTO legal department has conceded that this issue has not been litigation and so, this latter interpretation just may apply.

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