Patent term adjustment:
Patent term adjustment (PTA), which is intended to adjust the patent term to compensate for delays occurred from the USPTO during the prosecution & examination of patent application.
Patent term adjustment (PTA) applicable for utility and plant patents, not for reissue, design patent applications.
History:
After the Uruguay Round Agreement Act (1994) and to realize patent harmonization, the term of the patent was adjusted from 17 years from the date of grant/issuance to 20 years from the date of filing of the national patent application, with effect from June 8th, 1995, subsequently including the prosecution time within the ambit of the patent term. This sets the onus on the PTO to conclude patent prosecution within 3 years from the filing date of application failing which would decrease the actual term expectancy of the patent, and exclusive monopoly worked out therewith. In this manner, PTA is a guaranteed tool to get a term extension of the patent for any category of patents when the delay happens from the patent office side in the countries where this provision is applicable.
Calculating Patent term adjustment (PTA):
PTA calculated as:
PTA= ((Delay of PTO =Type A delay + Type B delay + Type C delay - overlapping) - Applicant delays)
Type A delay
Type A delays sometimes referred as (14-4-4-4) rule, this rule applicable in the below scenarios
- PTO issues an first office action or notice of allowance more than 14 months after the application is filed.
- PTO acts more than 4 months after applicants file a reply to office action.
- PTO acts more than 4 months after a decision on appeal or decision by a federal court finding at least one claim allowable.
- PTO issues a patent more than 4 months after payment of the issue fee.
Type B delay
PTA granted if the PTO doesn't conclude patent prosecution within 3 years of filing, excluding time consumed by the following (“B delay”).
However, there are certain “exceptions” to B-delay and time consumed for these exceptions during the prosecution stage are not considered when calculating B-delay.
For instance,
Request for Continued Examination (RCE), interference,
derivation proceeding,
secrecy order and review by Patent Trial and Appeal Board (PTAB) or court are considered as exceptions to B-delay.
Case study
This is the post-Novartis way of calculating B-delay with exceptions where, unlike pre-Novartis, even if there are B-delay exceptions, time taken after Notice of allowance (NOA) till the patent is issued will still be considered as B-delay extension provided it has crossed the 3-year duration.
One thing to note here is the filing of RCE is considered as an applicant’s delay and not an exception to B-delay if it is filed after Notice of Allowance (NOA).
Type c delay
PTA granted if issuance was delayed due to interference or derivation proceeding, imposition of a secrecy order, or appellate review by PTO or federal court that reversed an adverse determination of patentability.
PTA is the sum of A, B and C delays, excluding the following periods of time:
Overlap between A, B and C delays
Patent term specified in a terminal or statutory disclaimer
Applicant delay
Applicant delays such as:
Taking longer than three months to reply to a PTO notice or office action.
Abandonment of the application or late payment of the issue fee.
Failing to file a petition to withdraw abandonment or revive an application within two months from issuance of a notice of abandonment.
Converting a provisional application to a nonprovisional application.
Submitting a preliminary amendment or other preliminary paper less than one month before issuance of an office action or notice of allowance that requires the issuance of a supplemental office action or notice of allowance.
Submitting a reply having an omission.
Submitting a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the PTO, after a reply has been filed.
Submitting an amendment or other paper after a notice of allowance.
Terminal Disclaimers
Terminal disclaimers (TD) cut off the term of a patent after any PTA has been applied, but before any PTE has been applied. Thus, the filing a Terminal Disclaimer can cause a patentee to lose portions or all of the PTA.
India scenario in Patent term adjustment (PTA):
In india there is no provisions like PTA and PTE
The honorable committee concluded that the 20-year patent term that was originally provided for a 7-year or 14-year delay and nothing prevents the applicant/inventor from taking steps for regulatory approval and commercialization while the patent application is pending. India has not yet implemented such provisions.
Comments
Post a Comment