No patent term extension

Patent Term Extensions

No patent term extension for applications filed before 6/8/95 -

On or after 6/8/95 and before 5/29/2000 –

• PTO delay: can be extended 5 years for delays in issuance due to interference; secrecy; successful appeal.

• Pre-market Regulatory Review (e.g., FDA review) 5 years + 5 years (PTO delay).

Patents issued on applications filed on or after 5/29/00, including CPA (but not design or reissue) -

• no limit on total length of adjustment.

• Applicant has one chance to request reconsideration of initial determination,

but may also obtain judicial review.

• If the delay is due to PTO – day by day patent term adjustments for failure to:

1) initially act on an app within 14 months;

2) respond to a reply or appeal by applicant within 4 months;

3) act on app with at least one allowable claim after BPAI or court decision within four months of decision;

4) issue app after issue fee is paid and all other req.’s are satisfied; and

5) issue patent within 3 years of actual filing date of app (unless delay is caused by applicant requested

RCE, interference, secrecy order, or appeal).

Other delays – day by day: interferences; secrecy orders; successful appeals to BPAI or fed court.

Limitations on AIPA term adjustments –

• where overlapping, no adjustment beyond actual days issuance was delayed;

• adjustment will be reduced by amount of time applicant failed to engage in reasonable efforts to conclude

prosecution; failures include: requesting EOT; failing to file complete app at date of filing; failure to

fulfill national stage req.’s ; app is not in proper form; filing papers prior to one month before examiner

mails office action – necessitates a supplemental action by PTO; supplemental reply; amendment after NOA; and

• further prosecution via a continuing app eliminates any adjustments that may have been accumulated in the parent.