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ARTICLE · 04 DECEMBER 2023

Patent Term Adjustment Woes

Thompson Coburn LLP
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Generally, receiving Patent Term Adjustment (PTA) for a patent that took the United States Patent Office (USPTO) a long time to issue is welcome.

United StatesIntellectual Property
William Holtz
William Holtz
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Generally, receiving Patent Term Adjustment (PTA) for a patent that took the United States Patent Office (USPTO) a long time to issue is welcome. The purpose of awarding PTA is to compensate applicants for lost patent term due to Office delays not attributable to the applicant.

Imagine, however, a court holds that because the Office's award of PTA causes a certain patent to expire later than another related patent, even with the same priority date, obviousness type double patenting (OTDP) applies, and your later expiring patent is invalid because it was not terminally disclaimed to the term of the earlier expiring patent. This occurs even though the USPTO never raised the issue of OTDP during prosecution. How can it be that the Office's policy of compensating applicants for the Office's delay puts those same patents at risk of being invalidated under OTDP?

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