Patent Terms and Extensions (MPEP 2700)

by patentbar on December 6, 2007 · 3 comments

in MPEP 2700

Patent Terms

  • Patents filed before 6/8/95 – term is greater of 20 years from filing date or 17 years from issue date.
  • Foreign and provisional priority not counted when determining filing date for term purposes.
  • Utility and plant applications filed on or after 6/8/95 – term begins on issue date and lasts for 20 years from filing date.
  • Design patents – term is 14 years from issue date.
  • Patents resulting from international applications –term ends 20 years from date of filing international application.
  • CPAs – term is based on filing date of prior application or, for chain of CPAs, filing date of application immediately preceding the first CPA in the chain.

Patent Term Extensions

No patent term extension for applications filed before 6/8/95 –

On or after 6/8/95 and before 5/29/2000 –

  • PTO delay: can be extended 5 years for delays in issuance due to interference; secrecy; successful appeal. 
  • Pre-market Regulatory Review (e.g., FDA review) 5 years + 5 years (PTO delay).

Patents issued on applications filed on or after 5/29/00, including CPA (but not design or reissue) – 

  • no limit on total length of adjustment. 
  • Applicant has one chance to request reconsideration of initial determination, but may also obtain judicial review. 
  • If the delay is due to PTO – day by day patent term adjustments for failure to: 1) initially act on an app within 14 months; 2) respond to a reply or appeal by applicant within 4 months; 3) act on app with at least one allowable claim after BPAI or court decision within four months of decision; 4) issue app after issue fee is paid and all other req.’s are satisfied; and 5) issue patent within 3 years of actual filing date of app (unless delay is caused by applicant requested RCE, interference, secrecy order, or appeal). Other delays – day by day: interferences; secrecy orders; successful appeals to BPAI or fed court.

Limitations on AIPA term adjustments –

  •  where overlapping, no adjustment beyond actual days issuance was delayed;
  • adjustment will be reduced by amount of time applicant failed to engage in reasonable efforts to conclude prosecution; failures include: requesting EOT; failing to file complete app at date of filing; failure to fulfill national stage req.’s ; app is not in proper form; filing papers prior to one month before examiner mails office action – necessitates a supplemental action by PTO; supplemental reply; amendment after NOA; and
  • further prosecution via a continuing app eliminates any adjustments that may have been accumulated in the parent.
1 Mr.whiteNo Gravatar March 26, 2014 at 6:35 am

Okay. Let’s start cooking.

2 mayteaNo Gravatar January 27, 2016 at 9:47 am

I just found a question that caught me off guard. I previously thought that a US application that claimed priority to another national filing within 12 months, had a 20 year term from the other national filing/application.

I previously thought that going the PCT route (international app) or going directly into US (no PCT) had no effect on US patent.

If this is correct, one can get an effective 21 year patent term by not goiing the PCT route.

3 JustDoneNo Gravatar February 5, 2016 at 3:52 pm

MPEP 2701
The term is 20 years from the filing of the US non-provisional or PCT application (“term starts at date the application was filed in the USA”)independent of whether they claim priority of a foreign application or provisional application (35 USC 119 applications exempted under 35 USC 154(3)) .
If the application claims the benefit of a non-provisional application (i.e. not covered by 35 USC 119), the term starts with the filing of the non-provisional application.

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