Can Patents Be Extensible Beyond 20 Years?

Patent, as we know is an exclusive right granted to the owner of an invention for a period of 20 years. Although 20 years sound like a long time, the term is actually calculated from the date of filing of the application or if an international application is claimed from the priority date of an application. Of the 20 year term, the period from the grant till the expiry of the patent is the real time a patentee enjoys the maximum benefit of his invention.

From the time of filing to the time of grant, an application undergoes many processes and ends up with a grant only if the application complies with all the legal requirements as required by the patent law.

USPTO has set certain time limits for the completion of each process from the date of filing like publication, Issue of First Examination Report, reviewing the Reply to the Office Action etc. However at times, due to the bulk of the applications or some other reasons, there may be unexpected delays from the patent office during the prosecution of the application. Any type of delay that occurs either from the Office or the applicant in turn affects the ‘actual’ monopoly period.

Patent term Adjustment (PTA) or Extension is a provision under the USPTO to compensate the certain specified types of delays that occur from the PTO when the application is pending before the Office.

There are mainly three types of delays that are considered for a PTA. First delay is when the USPTO fails to reply within the time frames as set forth in the patent law. The second delay occurs when there is a delay in the issuance of patent. As per the USPTO rule, a patent is issued within 3 years from the date of filing the application, i.e. the prosecution should be completed within 3 years. And the third type of delay occurs due to interference proceedings, secrecy orders or successful appellate review.

Delays that arise from the applicants end lead to reduction in the extension to that amount of time delay. PTA is calculated in addition to the 20 year patent term. The applicant will be informed of the PTA in the ‘Notice of Allowance’ and will be given an opportunity to request for reconsideration of PTA value before or at the time of payment of issue fee.

Authored by Bency Varghese

Contributed by Portfolio team of BananaIP

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