Patent Term Length. How to Get Your Patent to Last Longer. Episode 67

Patent Term Length – Can You Extend It?

I titled this episode Patent Term Length and How to Get Your Patent to Last Longer, but that’s probably not the best phrasing. It’s not like you can use certain tricks to extend your patent. You used to be able to do that because patents used to last 17 years from when they issued. If you could postpone the issue date and keep your patent pending, you could effectively extend its expiration date.

That changed in 1995. Now, patents last 20 years from the filing date, so no matter how long you try to postpone it, it will likely expire 20 years after your filing date—with a few exceptions, which I’ll go over.

Provisional Applications and Patent Term Calculation

The first thing to note is that provisional patent applications don’t count toward the 20-year patent term. If you filed a provisional application on January 1, 2001, and then filed your non-provisional application on January 1, 2002, your patent (if issued) will last until January 1, 2022—not 2021.

Some say that filing a provisional application gives your patent a 21-year effective term, but that’s a little misleading. You only have an issued patent from the date it is granted until it expires. If your patent takes 2-3 years to issue, you still only have around 17 years of actual protection under an issued patent.

Foreign Applications and PCT Filings

Like provisional applications, foreign applications don’t count toward the 20-year term. If you filed a U.S. application based on a foreign patent application, the 20-year date is calculated from the first U.S. filing date.

However, if you file a PCT (Patent Cooperation Treaty) application, the 20-year term starts from the PCT filing date.

Patent Term Adjustments (PTA) and Patent Term Extensions (PTE)

Now let’s talk about ways that a patent can last longer than 20 years. There are two main ways:

• Patent Term Adjustment (PTA)

• Patent Term Extension (PTE)

You can find these rules under 35 U.S.C. §§ 154 and 156 if you want all the details.

Patent Term Adjustment (PTA)

Patent term adjustment (PTA) is more common. The USPTO can be slow, and it’s not fair for an inventor to lose patent term due to backlog and delays.

For example, imagine your patent takes 19 years to issue because the USPTO was really backlogged, and then it issues right away. If you only had one year of patent protection left, that wouldn’t be fair. So, the USPTO compensates for these delays through PTA.

There are different types of delays:

• Rule A Delays: If the USPTO takes more than 14 months to issue the first office action, you get extra days added.

• Rule B Delays: If the USPTO takes more than four months to respond to your responses, you get time added.

• Rule C Delays: If your patent takes more than three years to issue, you get extra days.

However, delays can’t overlap, meaning you can’t just add up all the days and assume that’s how many extra days you’ll get. There have been cases litigated over what counts as overlapping vs. non-overlapping delays.

Applicant Delays

Just as the USPTO can cause delays, you as the applicant can cause delays—and those reduce any extra time added.

For example, if you take more than three months to respond to an office action, those extra days are deducted from any extension you might have earned due to USPTO delays.

Patent Term Calculator

There is an online Patent Term Calculator available on the USPTO website where you can input dates and determine your patent expiration date. However, if you don’t fully understand the delay rules, you could get an incorrect answer.

Patent Term Extension (PTE) – For Drug Patents

Patent term extension (PTE) applies mostly to drug patents.

The reason for this is that drugs require FDA approval, which takes years. If it takes five years for a drug to get FDA approval, the patent term is effectively shortened. So, the USPTO grants extra patent term time to compensate for commercialization delays due to regulatory review.

Typically, drug patents end up with 7 to 12 years of actual exclusivity due to these adjustments and extensions.

If you don’t think drugs should have patent protections, that’s a separate debate, but under current law, PTE exists to ensure that drug companies can recoup their investments in research and regulatory approval.

Is It Worth Fighting for Extra Patent Term?

For most people, a month or two of extra patent term might not seem important. But in some industries—especially pharmaceuticals—every day of patent protection matters.

For example, the cholesterol-lowering drug Lipitor reportedly generated about $24 million per day while under patent. Imagine how much money Pfizer would lose if the patent expired even one month earlier than necessary.

That’s why big companies fight aggressively for every single day of patent term adjustment or extension.

For most inventors, patent term adjustment (PTA) is what matters, not patent term extension (PTE).

When your patent issues, the USPTO calculates and states the number of extra days added to your patent term based on PTA. It’s always a good idea to double-check the calculations to ensure the USPTO got it right.

For most people, an extra month or two won’t make a big difference, but in industries like pharmaceuticals, it can be worth millions—or even billions—of dollars.

I’m Adam Diament, and until next time, keep on inventing.