On December 1, 2011, the U.S. Patent and Trademark Office ("PTO") issued new regulations relating to the calculation of the term of a U.S. patent. The announcement was the latest of many concerning the legal framework for calculating patent term, or the amount of time that a patent remains in force, which can be of critical importance to patentees, competitors, and investors. This article provides an overview of the complex landscape of patent term calculation, highlights the basic principles, namely patent term adjustment, patent term extension, and terminal disclaimer, and explains how competing aspects of the law have been resolved by the courts. The Uruguay Round Agreements Act ("URAA"), which went into effect in 1995, changed the patent term calculation in the United States. Prior to the URAA, for more than 200 years, the term of a U.S. patent was a fixed number of years (most recently, 17 years) from the date the patent issued. Under the fixed-term-after-issue regime, patent term was essentially independent of the amount of time it took the PTO to review the patent application. The URAA essentially adopted the international system in which the term of a patent expires on the date that is 20 years from the filing date of a patent application or earliest applicable priority date.1 Thus, under the current twenty-years-from-filing regime, if it takes two years for a patent to issue, the effective term of the patent is 18 years. If it takes 12 years for the application, or a series of related applications to be reviewed—-as sometimes happens, for various legitimate and unfortunate reasons—the effective term of the patent when it finally issues will only be eight years. Some members of Congress worried that patentees would be disadvantaged by the new twenty-years-from-filing patent term because of the possibility that the delay at the PTO would excessively shorten the effective patent term. Thus, the American Inventors Protection Act of 1999 (AIPA) was passed and established procedures for adjusting patent term such that a diligent patentee ideally receives a patent term akin to that before the URAA: approximately 17 years of patent term from issue regardless of the delay at the PTO during its review of the application.
Patent Term Adjustment
Patent Term Extension
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