How to Calculate Period of Adjustment of Patent Term

Good records are necessary when calculating patent term adjustment.

Under 35 U.S.C. 154, the term of a patent begins "on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States." This rather complex rule evolved from the extraordinary delays in examining patent applications during the tech boom. It provides for adjustment of term in response to delays on the part of the patent office, or lack of due diligence on the part of the inventor in prosecuting his application.

Things You'll Need

• Allowed patent application
• Computer with internet access
• Personal records related to the prosecution of the patent application

Instructions

Term adjustment online

1. Go to the web site of the United States Patent and Trademark Office (PTO) and log in. Presumably, since you have filed an application, you are a registered user. If not you will have to obtain a customer number and PKI certificate. Both of these can be obtained from the PTO. The PKI certificate allows you to securely access your patent applications and related information.

2. Go to the Patent Applicant Information Retrieval (PAIR) screen. You can access "Private PAIR", which provides real-time information about how the term adjustment for a particular application is calculated. In fact, private PAIR allows an attorney, agent, or inventor to look at the PTO's internal database (PALM). Find the application filing date and the issue date on the PAIR screen. Compare these to your personal records.

3. Find the entries for "A", "B" and "C" delays.

   "A" delays are the number of days beyond 14 months that it took the PTO to generate a first office action or a notice of allowance.

   "B" delays are the number of days added "to the term of the patent based upon the patent failing to issue within three years of the actual filing date of the application in the United States".

   "C" delays are the number of days that issue was delayed because of interference proceedings, secrecy orders, and successful appellate review by the Board of Patent Appeals.

   Compare the number of days the term has been adjusted with your personal records.

4. Examine the prosecution history of the application. Did you take longer than three months to answer an office action? Did you apply for any extensions? Such actions show a lack of diligence, and the PTO will deduct this time from your patent term extension.

5. If your calculations do not agree with those of the PTO you can request reconsideration. The request for reconsideration must be filed no earlier than the date of allowance and no later that the date the issue fees are paid.
   If you agree with the calculations but believe that you were unable to respond in spite of having exercised all due care you can still request reinstatement of your "lost" time.

Tips & Warnings

• Consider consulting a patent agent or attorney if you believe the PTO's calculations are wrong. Additional assistance by someone with experience with dealing with the PTO help make your request more persuasive.

References

• 35 USC 154
• USPTO: Simplification of Term Adjustment
• PTA Calculation