Brief Summary:
This chapter discusses the intricacies involved with patent terms including how a term may be adjusted or extended.
Key Terms:
| Duty of Disclosure | Duty of disclosure is the obligation of patent applicants to disclose all known relevant information, including prior art, to the patent office to ensure a fair and thorough examination of the patent application. |
| Patent Term | Patent term is the period during which a patent is in effect, granting the patent holder exclusive rights to the invention, typically lasting 20 years from the filing date of the patent application. |
| Patent Term Extension | Patent term extension refers to the prolongation of a patent’s duration beyond its original expiration date to compensate for time lost during regulatory review processes, particularly for pharmaceuticals and medical devices. |
| Period of Adjustment | Period of adjustment refers to the additional time added to a patent’s term to compensate for delays caused by the patent office during the examination process, ensuring the patent holder receives the full intended duration of protection. |
| Third-Party | A third party refers to any individual or entity that is not directly involved in the patent application or ownership but may have an interest or be affected by the patent, such as competitors or industry stakeholders. |
37 CFR (Code of Federal Regulations):
| 37 CFR 1.701 – Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000). |
| 37 CFR 1.701 provides for the extension of a patent term to compensate for examination delays for original applications (excluding designs) filed between June 8, 1995, and May 29, 2000, under the Uruguay Round Agreements Act. |
| 37 CFR 1.702 – Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, on or after May 29, 2000). |
| 37 CFR 1.702 outlines the grounds for adjusting a patent term to compensate for examination delays for original applications (excluding designs) filed on or after May 29, 2000, under the Patent Term Guarantee Act of 1999. |
35 USC (United States Code):
| 35 USC 154 – Contents and term of patent; provisional rights. |
| 35 USC 154 specifies the contents and duration of a patent, including the standard 20-year term from the application filing date, and outlines provisional rights allowing patent holders to obtain reasonable royalties from infringers during the period between publication and grant. |
| 35 USC 156 – Extension of patent term. |
| 35 USC 156 provides for the extension of a patent term to compensate for time lost during regulatory review processes, particularly for products like pharmaceuticals and medical devices, allowing patent holders to restore some of the effective patent life lost due to these delays. |
Quick Statistics:
Number of Pages: 93 pgs
Sections: 2701 – 2766
List of Sections:
| 2701 | Patent Term |
| 2702 – 2709 | [Reserved] |
| 2710 | Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154 |
| 2711 – 2719 | [Reserved] |
| 2720 | Applications Filed Between June 8, 1995, and May 28, 2000 |
| 2721 – 2729 | [Reserved] |
| 2730 | Applications Filed on or After May 29, 2000; Grounds for Adjustment |
| 2731 | Period of Adjustment |
| 2732 | Reduction of Period of Adjustment of Patent Term |
| 2733 | Patent Term Adjustment Determination |
| 2734 | Application for Patent Term Adjustment; Due Care Showing |
| 2735 | [Reserved] |
| 2736 | Third-Party Papers |
| 2737 – 2749 | [Reserved] |
| 2750 | Patent Term Extension for Delays at other Agencies under 35 U.S.C. 156 |
| 2751 | Eligibility Requirements |
| 2752 | Patent Term Extension Applicant |
| 2753 | Application Contents |
| 2754 | Filing Date |
| • 2754.01 Deadline for Filing an Application Under 35 U.S.C. 156(d)(1) • 2754.02 Filing Window for an Application Under 35 U.S.C. 156(d)(5) • 2754.03 [Removed and Reserved] | |
| 2755 | Eligibility Determination |
| • 2755.01 Interim Extension of Patent Term During the Processing of the Application • 2755.02 Interim Extension of Patent Term Before Product Approval | |
| 2756 | Correspondence Between the USPTO and the Regulatory Agency |
| 2757 | Regulatory Agency Determination of the Length of the Regulatory Review Period |
| • 2757.01 Due Diligence Determination | |
| 2758 | Notice of Final Determination – Calculation of Patent Term Extension |
| 2759 | Certificate of Extension of Patent Term |
| 2760 | Trade Secret, Confidential, and Protective Order Material |
| 2761 | Multiple Applications for Extension of Term of the Same Patent or of Different Patents for the Same Regulatory Review Period for a Product |
| 2762 | Duty of Disclosure in Patent Term Extension Proceedings |
| • 2762.01 Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings | |
| 2763 | Limitation of Third-Party Participation |
| 2764 | Express Withdrawal of Application for Extension of Patent Term |
| 2765 | Petition for Stay in Processing of Patent Term Extension Application |
| 2766 | Processing of Patent Term Extension Applications When Reissue Has Been Filed |