This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this article addresses how the filing of various papers during prosecution can affect PTA. In particular, Requests for Continued Examination (RCEs), terminal disclaimers, and information disclosure statements (IDSs) can all cause adverse PTA effects if not carefully considered.
Typically, U.S. patent term is 20 years from the earliest effective filing date, regardless of how long it takes the United States Patent and Trademark Office (“USPTO”) to examine and issue the patent. In an effort to minimize the possibility of shortened patent term, Congress created the system of PTA, codified at 35 U.S.C. § 154(b), that allows, in certain circumstances, the effective patent term to be extended past 20 years from an application’s earliest effective filing date. But as with many rules, there are exceptions.