A patent grants its owner the right to exclude others from making, using, selling, offering for sale or importing an infringing product or composition for a limited term. These rights begin when the patent issues, not when the patent application was filed.

Historically, the term of a U.S. utility patent was seventeen years from the issue date. Delays in the prosecution of the application delayed the issuance of the patent, but not its term. If no one was infringing the patent, prosecution delay was not harmful to the patentee. In fact, it was helpful because it delayed the start of the patent's seventeen-year term.

In recent years, there has been a world-wide effort to harmonize the substantive patent laws of various countries. Most foreign countries issue patents for a term of twenty years from the filing or priority date. In 1995, Congress changed the term of a patent from seventeen years from the issue date to twenty years from the earliest U.S. filing date on which the application relied.

A hardship could occur under the revised statute if undue delays were incurred during prosecution. Such delays would eat into the twenty-year term. To ameliorate this, Congress has now further amended the patent statute. The potential term of a U.S. patent has now been changed by a guarantee of prompt prosecution by the United States Patent and Trademark Office (PTO). By statute, the PTO is now required to guarantee that prosecution of patent applications will not take more than three years. The PTO is now required to provide a first “Office Action” on the merits within fourteen months, to respond to an Amendment within four months, to take action following an appeal within four months and to issue a patent within four months after payment of the issue fee. These time periods are now known as "14/4/4/4.”

If prosecution takes longer than the maximum three-year period, the term of the patent will now be automatically extended on a day-for-day basis to the extent that prosecution delays are the PTO’s fault. There are, of course, certain set-offs, such as delays occasioned by the applicant, disclaimers and the like.

Inasmuch as the exclusionary rights afforded by a patent generally come into being when the patent issues, the recent changes to the patent statute equate the enforceable part of the patent term to what it had been under the old law. In other words, a patent term of twenty years from an application's filing date, coupled with a guarantee of no more than three-year patent prosecution, would generally appear to equal the old term of seventeen years from the issue date.

This article was prepared by Peter K. Sommer, an attorney in the Intellectual Property Practice Area.
e-mail: psommer@phillipslytle.com