Chapter §1.05 The Term of a Patent

• Jurisdiction: United States

§1.05 The Term of a Patent

[A] Length of Term

The U.S. Constitution specifies that inventors are to be secured exclusive rights to their discoveries "for limited times," but does not specify any particular number of years during which their right to exclude can be enforced.¹⁰¹ The first U.S. patents lasted 14 years from issuance, based on the patent term in England at that time.¹⁰² The U.S. patent term was extended to 17 years from issuance by the Patent Act of 1861.¹⁰³ The length of time during which the patent application was pending in the USPTO before patent issuance was not relevant to the patent's term.¹⁰⁴

Pursuant to the TRIPS-implementing Uruguay Round Agreements Act, U.S. law on the term of patents underwent a major change effective June 8, 1995.¹⁰⁵ The change harmonized U.S. term computation with that of other countries. It also dramatically reduced incentives to obtain submarine patents, the colloquial term for patents that issue after secretly pending in the USPTO for many years.¹⁰⁶

For any patent application filed on or after June 8, 1995, that patent will expire twenty years after the application's earliest effective U.S. filing date.¹⁰⁷ For patents that were in force on June 8, 1995, or for patent applications already pending on that date, the patent will expire on the later of the two dates—either 20 years from filing, or 17 years from issuance, whichever is later.¹⁰⁸

Although patent attorneys often speak in shorthand of the "20-year patent term," that terminology is not precisely correct. The term, or enforceable life, of a patent does not begin until the date the patent is issued (i.e., on the "issue date") by the USPTO. A patent is entirely a creature of statute. While a patent application is still pending, there is no basis for a lawsuit alleging patent infringement because there is not yet any patent in existence.¹⁰⁹

The patent term expires on the date that is 20 years after the earliest effective U.S. filing date.¹¹⁰ The application pendency period is subtracted from 20 years to obtain the patent term. Typical U.S. patent application pendencies last almost 2.5 years, at least for mechanical inventions.¹¹¹ Thus, the colloquial "20-year term" is, in reality, usually about 17.5 years, as illustrated in Figure 1-1.

FIGURE 1-1. Typical U.S. Patent Time Line (Not to Scale)

¹¹²,¹¹³

[B] Patent Term Adjustment

Under the current 20-year term system¹¹⁴, the term of a patent is reduced by the period of time during which the application was pending in the USPTO. For commercially valuable patents, even one day's reduction of patent term can have severe financial consequences. Thus it was necessary to ensure that patent owners were not penalized for pendency delays caused by the USPTO rather than by the applicants themselves.

Accordingly, the 1999 American Inventors Protection Act added to U.S. patent law the concept of patent term adjustment ("PTA") for such delays.¹¹⁵ The statutory provision that governs patent term adjustment is 35 U.S.C. §154(b). The USPTO has implemented §154(b) in extensive agency regulations.¹¹⁶

Subsection 154(b)(1)(A) of the Patent Act concerns prompt USPTO responses. It provides that if the issue of a patent is delayed by certain failures of the USPTO to take timely action during the patent application's pendency, the term of the patent will be extended by one day for each day of such delay. Subsection 154(b)(1)(B) provides a guarantee of no more than a three-year application pendency. If due to certain USPTO delays the patent is not issued within three years after its filing date, the term of the patent will be extended by one day for each day beyond the three-year window. The delay under this subsection does not include time consumed by requests for continued examination (RCE's),¹¹⁷ by interferences, by secrecy orders, by appeals to the Board or the Federal Circuit, or for processing delays requested by the applicant. Moreover, the period of adjustment under this section will be reduced by any delay on the part of the applicant in responding to USPTO actions more than three months after they were transmitted.¹¹⁸

Section 154(b)(1)(C) provides adjustment for delays due to interferences, secrecy orders, and appeals in which the applicant succeeds in obtaining a reversal of an adverse determination of patentability.

Any period of patent term adjustment resulting from the USPTO delays described above is subject to being reduced by delays that are the fault of the applicant; namely, by any period of time during which the applicant failed to engage in "reasonable efforts to conclude prosecution" of his application.¹¹⁹ The USPTO will make a determination of any patent term adjustment to which the applicant is entitled and will transmit...