If you received a patent in the past seven months, you may be eligible to extend the term of your patent if you qualify for Patent Term Adjustment (PTA).
PTA can extend a patent’s term beyond its typical 20 years if certain delays occurred during prosecution of the application. PTA will account for any days beyond three years that the patent application was pending before the USPTO, with certain exceptions. Exceptions include delays caused by the applicant, such as a request for an extension of time to respond to a USPTO action.
The USPTO has also treated any time after the applicant filed a request for continued examination (RCE) as an exception to the PTA eligibility period. A new court decision (Novartis AG v. Lee) held that the USPTO was only partially right. According to the new decision, although PTA will not be awarded for the time between RCE filing and allowance, PTA should be awarded for the time spent between allowance and grant. This period is commonly three to five months, which means that many granted patents may be eligible for PTA to cover this additional period.
Under current USPTO rules, the deadline for filing a Request for Reconsideration of PTA Calculation is two months from grant. This time period may be extended period by five months. A $200 petition fee is required, plus extension of time fees if filed within the 5-month extension period.
So, if you were awarded a patent within the past seven months, and if you filed an RCE while the patent was pending, you should act fast if you want to take advantage of the additional PTA that may available based on this new Court decision.