Maximizing patent value by maximizing patent term

This is because your patent can restrict your competitors' rights to make, use, or sell your patented product (or use your patented method) for the duration of the patent's term.

To secure this competitive edge for as long as possible, you should remember that the standard 20-year term of your US patent can be extended to account for Patent Office delays in examining and issuing the patent, as long as you yourself don't delay the examination process.

The Patent Term Adjustment (PTA) provisions prolong your patent term if the Patent Office fails to meet certain internal timelines during the examination process.

However, the provisions also call for deductions to account for times when the applicant "failed to engage in reasonable efforts to conclude prosecution."

To ensure that your patent is in effect for as long as possible, you should be careful to avoid causing delays that may reduce your PTA.

Some common PTA pitfalls and strategies for avoiding them are outlined below.

PTA pitfall: Filing a Preliminary Amendment within one month of an Office Action/Notice of Allowance will result in PTA deduction if the Examiner has to issue a supplemental Action/Notice of Allowance.

PTA strategy:

File Preliminary Amendments as soon as possible after an application is filed.

Consider calling the Examiner to make sure an Action is not about to issue, and see if the Action can wait.

PTA pitfall: Filing a response more than three months after the relevant Notice or Action will result in PTA deduction, even if the response period is properly extended.

PTA also is reduced if a deadline falls on a weekend or Federal holiday, and the response is not filed until the next business day.

PTA strategy:

File responses at the three-month deadline whenever possible.

If a response deadline falls on a weekend or holiday, file it on the preceding business day, even though the Patent Office rules permit filing on the next business day.

PTA pitfall: Filing a supplemental response will result in PTA deduction.

PTA strategy: Minimize the number of supplemental responses filed.

Consider calling the Examiner to determine whether the issue can be addressed in response to the next Action or resolved by an Examiner's Amendment.

If an Examiner suggests an amendment to allow the application, ask him/her to issue an Examiner's Amendment.

PTA pitfall: Filing an Information Disclosure Statement (IDS) after the first Office Action will result in PTA deduction, unless the IDS is filed with a response or the submitted information was cited by a foreign patent office less than 30 days previously.

PTA strategy:

File IDSs well before the first Office Action.

If an Office Action is pending, wait to file the IDS with the response.

Advise foreign patent attorneys of the 30 day deadline, to ensure that foreign-cited references can be submitted within that time frame.

PTA pitfall: Filing an Amendment after a Notice of Allowance has issued will result in PTA deduction.

PTA Strategy:

Ask the Examiner to make the correction by an Examiner's Amendment.

If the correction is a minor one that is supported by the prosecution file history, consider making the correction by a Certificate of Correction after the patent has issued.

By becoming familiar with these rules and adopting strategies for avoiding PTA deductions, you can enjoy the full benefits of the PTA provisions, thereby maximizing the life of your patents and further securing your competitive edge.

Courtenay C Brinckerhoff, Esq, is a Senior Counsel in the Intellectual Property Department of Foley & Lardner LLP, and counsels clients in the chemical, biotechnological and pharmaceutical fields.

The views expressed in this article do not represent the opinion of Foley & Lardner LLP or its clients.