By Larry Zelson of Drinker Biddle & Reath | Larry S. Zelson is an intellectual property associate in the Philadelphia office of Drinker Biddle & Reath LLP. Prior to becoming an attorney, Larry worked as an engineer and engineering consultant for several years, designing, programming, and commissioning equipment as varied as oxy-fuel burners, bioreactors, and cryogenic food freezers. Larry is a graduate of the University of Pennsylvania Law School, where he was a legal writing instructor and a member of Law Review. He has graduate degrees in mechanical engineering from Stanford University and an undergraduate degree in mechanical engineering from Carnegie-Mellon University. He holds three issued patents for his own inventions. Larry can be reached at (215) 988-2932 or Larry.Zelson@dbr.com |
Patent term extensions can be extremely valuable for inventions with long-term commercial
viability, yet common continuation practices can undermine some or all of the value of an available
patent
term extension. Since June 8, 1995, utility patent applications filed in the USPTO have been entitled to
a term of 20 years from the earliest utility application filing date to which the application is
entitled.
1 The American Inventors
Protection Act (AIPA)
of 1999 provided for Patent Term Adjustments (PTA), enabling extension of the patent term beyond the
20 years
from filing rule in three circumstances, including that the USPTO failed to meet certain benchmarks for
issuing
official actions and that the patent application was pending for more than three years.2
These patent term extensions are cumulative to the extent that they do not occur in overlapping
time periods.
3
During prosecution, a point is sometimes reached at which some narrower claims are allowable while
other
broader (more desirable) claims are rejected. In many of these cases, an applicant will allow a patent
to issue with the narrower claims and file a continuation to pursue the rejected claims, and the
continuation
issues within a...
