USPTO – Patent Term Adjustment Error

The United States Patent and Trademark Office (USPTO) has discovered that a coding error introduced in a recent software update has affected the Patent Term Adjustment (PTA) calculation of certain patents issuing from March 19, 2024 through July 30, 2024. The USPTO estimates about 1% of patents issued in this period may be impacted and has set a tight deadline to correct without fee.

The coding error applies to those patents having Type A delay and overlap calculations. Any request for reconsideration of patent term for the sole reason of this error may be filed without a fee within seven months of the date the patent was granted. ?

This deadline can be as soon as Oct. 19, 2024 for an impacted patent that issued on March 19, 2024.?When requesting a fee waiver, the Office advise patentees to refer to the USPTO Letter of Sept. 25, 2024 by issued by Director Vidal that announced the coding error and fee waiver (OG publication expected Oct. 22, 2024).

For reference, the Type A delay and overlap provisions are provided below:

35 U.S.C. § 154

(b) Adjustment of Patent Term.—

(1) Patent term guarantees.—

(A) Guarantee of prompt patent and trademark office responses.—Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—

(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—

(I) the date on which an application was filed under section 111(a); or

(II) the date of commencement of the national stage under section 371 in an international application;

(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;

(iii) act on an application within 4 months after the date of a decision by the Patent Trial and Appeal Board under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or

(iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied, the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

(2) Limitations.—

(A) In general.—

To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.

No other patent term provisions under § 154 were impacted by this error, and the error has since been corrected.

Article by Graham Christian, Legal Intern