Adjustment of Patent Fees

Sections 4201 to 4206 of the American Inventors Protection Act of 1999, subtitled the Patent and Trademark Fee Fairness Act of 1999, effectively lowers the filing fees for:

1. an original patent application,
2. reissue of a patent, and
3. certain international applications where the USPTO was the International Searching Authority but not the International Preliminary Examining Authority.

from $760.00 to $690.00. Additionally, patent maintenance fees were lowered from $940.00 to $830.00.

Section 4203 of the Patent and Trademark Fee Fairness Act of 1999 authorizes the Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office to adjust trademark fees in the fiscal year of 2000. The Under Secretary of Commerce for Intellectual Property and the Director of the USPTO may adjust these fees without regard to fluctuations in the consumer price index during the preceding 12 months.

Effective Date

Adjustment in patent fees shall take effect 30 days after the date of the enactment of this Act (December 29, 1999). The ability of the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO to adjust trademark fees shall take effect on the date of the enactment of this Act (November 29, 1999).

Patent Term Guarantee

Sections 4401 to 4405 of the American Inventors Protection Act of 1999, subtitled the Patent Term Guarantee Act of 1999 contains provisions to extend the term of a patent if specified actions are not taken by the USPTO within a certain time frame.

Time Frames for Office Actions, Interferences, and Appeals

Section 4402 of the Patent Term Guarantee Act of 1999 provides that:

1. The PTO is to provide an Office Action or Notice of Allowance not later than 14 months after the date on which the application was filed or the date on which an international application fulfilled the requirements of 35 U.S.C. § 371 (i.e. a U.S. filing based on an international application designating the United States).
2. The PTO is to respond to a reply to an Office Action, or to an appeal to the Board of Patent Appeals and Interferences within 4 months after the date the reply was filed or the appeal was taken.
3. The PTO is to Act on an application in which allowable claims remain within 4 months after the date of a decision by the Board of Patent Appeals and Interferences or a decision by a Federal court.
4. The PTO is to issue a patent within 4 months after the date on which the issue fee was paid.

If the USPTO fails to meet any of these deadlines the term of the patent will be extended one day for each of the days beyond the periods specified above until the required action is taken.

Time Frame for the Issue of a Patent

Section 4402 of the Patent Term Guarantee Act of 1999 guarantees that an original patent will issue no more than 3 years after the actual filing date of the application in the United States. If an original patent does not issue within 3 years after the actual filing date of the application in the United States the term of the patent shall be extended one day for each day after the end of the three-year period until the patent has issued.

Actions Which Toll the Period for Issue of a Patent

Certain patent prosecution procedures however, will toll the running of the three-year period of time in which the USPTO must issue an original patent. These actions include:

1. any time consumed by continued examination requested by the applicant,
2. any time consumed by an interference proceeding,
3. any time consumed by appellate review by the Board of Patent Appeals and Interferences,
4. any time consumed by the imposition of an order of secrecy or national security under 35 U.S.C. §181, and
5. any delay in the processing of the application that is requested by the applicant.

Section 4402 of the Patent Term Guarantee Act of 1999 also states that if the issue of an original patent is delayed because of certain prosecution proceedings or orders of review the term of the patent will be extended one day for each day of the pendency of the proceeding order or review. The relevant proceedings and orders of review are an interference proceeding, the imposition of an order of secrecy or national security, and appellate review by the Board of Patent Appeals and Interferences or by a Federal court in which the patent was issued under a decision in the review reversing an adverse determination of patentability.

Limitations on Patent Term Adjustments

Overlap of periods of delay

Section 4402 of the Patent Term Guarantee Act of 1999 provides that if periods of delay overlap the period of adjustment shall not exceed the actual number of days the issuance of the patent was delayed. Thus, even if one single day of delay can be attributed to two different reasons for that delay the term of the patent will only be extended by one day not two.

Terminal Disclaimers

An additional limitation to the extension of the patent term is related to terminal disclaimers. A patent, the term of which has been disclaimed, may not have its term adjusted beyond the expiration date specified in the terminal disclaimer.

Reasonable Efforts Required During Prosecution

The period of patent term adjustment will be reduced if the applicant failed to engage in reasonable efforts to conclude prosecution of the application. The period of reduction will be equal to the period of time the applicant failed to engage in reasonable efforts. An applicant will be deemed to have failed to engage in reasonable efforts to prosecute an application for the cumulative total of any periods of time in excess of three months that are taken to respond to a notice from the USPTO making any rejection, objection, argument, or other request. Thus, a response to an Office Action 4 months after it is mailed will decrease the patent term adjustment by 1 month. A response to a later request by the USPTO concerning the same application within one month from the time of mailing will not reduce the term adjustment any further. This three-month period of time will be measured from the date the notice was given or mailed to the applicant.

Additionally, the Director of the USPTO has been granted the authority to prescribe regulations establishing circumstances that will constitute failure of an applicant to engage in reasonable efforts to prosecute an application.

Procedures For Patent Term Adjustment Determination

Any adjustment in a patent term will be communicated by the Director of the USPTO to the applicant with the written Notice of Allowance of the application. At this point the applicant will have one opportunity to request consideration of any patent term of adjustment determination made by the Director. The Director may reinstate all or any part of the period of adjustment that was lost due to an applicant's failure to engage in reasonable efforts to prosecute the application if the applicant, prior to the issuance of the patent, makes a showing that, in spite of all due care, the applicant was unable to respond within the three-month period. However, no more than three additional months for each response beyond the original three-month period can be reinstated by the Director.

If an applicant is dissatisfied with the period of adjustment determined by the Director, the applicant can commence a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent. Such challenges to a determination of a patent term adjustment are not subject to appeal or challenge by a third party prior to the grant of the patent.

Continuing Examination

Section 4403 of the Patent Term Guarantee Act of 1999 grants the Director the power to prescribe regulations to provide for the continuing examination of applications for patents at the request of the applicant. The Director may also establish appropriate fees for such continued examination.

Effective Date

Patent Term Adjustment Amendments

The amendments concerning patent term adjustment will take effect on the date six months after the date of the enactment of this Act (May 29, 1999) and shall apply to any application filed on or after the date that is six months after the date of the enactment of this Act (May 29, 1999). These amendments concerning patent term adjustments do not apply to design patents.

Continuing Examination Amendments

The amendments concerning granting the Director of the USPTO the authority to prescribe regulations to provide for the continuing examination of applications for patents shall take effect on the date that is six months after the date of the enactment of this Act and shall apply to all applications filed under 35 U.S.C. §111(a), on or after June 8, 1995, and all applications complying with 35 U.S.C. §371, that resulted from international applications filed on or after June 8, 1995. These amendments concerning continued examination do not apply to design patents.