Imagine you have filed a patent application to protect your invention, but the review process at the United States Patent and Trademark Office (USPTO) or at another patent office takes longer than expected. This delay can eat into the valuable 20-year patent term you are entitled to, potentially impacting your ability to reap the full benefits of your invention.

This is where patent term adjustment (PTA) comes in. It is a mechanism established by the American Inventors Protection Act of 1999 to ensure inventors receive fair compensation for their innovations, even if the patent office experiences delays during the patent application process.

How does PTA work? The USPTO has specific timeframes for various stages of the patent application review. These timeframes, often referred to as "the 14-4-4-4-36 timeframes," outline how long the USPTO should ideally take to complete each step,

• 14 months: Issue an initial Office Action from the examiner
• 4 months: Respond to your reply or appeal to the Office Action.
• 4 months: Take action on your application after a decision from the Patent Trial and Appeal Board (PTAB) or a federal court.
• 4 months: Issue the patent after you pay the issue fee.
• 36 months: Grant the patent within 3 years of the filing date

If the USPTO exceeds these timeframes due to their own administrative procedures, and not because of any delays on your part (e.g., late fees, missing information), then the patent term may be extended by the corresponding amount of time. This extension is called the PTA.

The USPTO calculates the PTA based on the specific delays encountered during your application's review. There are three main categories of delays considered for PTA:

USPTO delay = Type A + Type B + Type C

PTA = A delay + B delay + C delay - Applicant delay - Overlap delay

• Type A delays: These are delays caused by the USPTO taking longer than expected to issue an office action
• Type B delays: These occur when the overall application processing exceeds three years from the filing date, excluding any time spent waiting for your response or addressing your actions.
• Type C delays: These are less common and involve specific situations like interference proceedings, secrecy orders, or successful appeals against USPTO rejections.
• Overlapping delays: Any overlap between A, B, or C delays
• Applicant delay: Applicant’s failure to engage in reasonable efforts (i.e., response to Office Action) to conclude the examination

It is important to note that not all delays qualify for PTA. The USPTO excludes certain periods, such as time taken for you (applicant or inventor) to respond to their communications or any delays you cause yourself. Additionally, the adjusted term cannot be greater than 20 years from the filing date of your application.

Please note that other countries offer similar extensions called Patent Term Extensions (PTEs). These PTEs typically focus on compensating inventors for delays caused by regulatory approval processes, particularly for inventions related to pharmaceuticals and agricultural products. Countries like United States, European Union, Japan, Israel, Russia, Ukraine, Australia, Singapore and Taiwan are known to have a sound system of patent term extension and also contain rules regarding amendments. On the other hand, countries such as India, China, Brazil, Mexico, Thailand, Hong Kong and Indonesia lack the laws relating to patent term extension.

Remember PTA plays a significant role in safeguarding the interests of inventors and small businesses by ensuring they receive fair compensation for their innovations, even in the face of unforeseen delays during the patent application process. This, in turn, fosters a more balanced and supportive environment for continued innovation and technological progress.