What is the term of my Patent? Patent Term Adjustment (PTAs)

It used to be that a issued patent’s term was seventeen (17) years, however, that term has been extended for most currently issued patents.  Typically, a currently issued patent will expire twenty (20) years after the date of filing; however, there are circumstances in which the length of the patent term may be adjusted (PTA). 

For example, in the biotech and pharmaceutical sector a issued patent’s term can be extended for up to five (5) years to offset regulatory delays.  See 35 USC 156 (f).  However, the USPTO is responsible for calculating the term of a patent.  See 35 USC 154 (b).  If for some reason the owner of a issued patent is dissatisfied with the USPTO’s determination of the Patent Term, then he, she or it must file a request to extend the term of the patent within a 180 days from the date of issuance.  See 35 USC 154 (b) and 37 CFR 1.705. 

Thus, if you believe you are entitled to a extension of the Patent term you must file a timely petition the Director of Patents to extend the term of your patent.  Recently, the Federal Circuit rejected the USPTO’s definition of the term “overlap” and required the USPTO to recalculate the term of a patent in Wyeth v. Kappos.   This will require the USPTO to recalculate the term for many issued patents.   

The PTA can effect the value of a patent and several additional business decisions, such as, the licensing royalties and rates to negotiate, the date at which a generic can come on to the market, the amount of reasonable royalties a licensor or a purchaser can expect in a merger, the period of exclusivity that a owner has to develop  follow through inventions, and many similar concerns. 

If you have any concerns or questions regarding the analysis for determining a PTA and how it can impact your business decisions, then please feel free to contact us.

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