Optimizing Patent Quality via Compromise Between Patent Term Adjustment and Publication After 18 Months

In January 2025, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd. affirming a decision by the Patent Trial and Appeal Board (PTAB) that had invalidated the patent claims of U.S. Patent No. 10,687,400 to Lynk Labs. This patent was issued on U.S. Application No. 16/693081, filed on November 22, 2019, which claimed priority to a number of provisional and ordinary patent applications, the earliest of which was dated February 25, 2004. The invalidation was on the basis of U.S. Patent Application Publication No. 2004/0206970 to Martin, which was a publication of U.S. application filed on April 16, 2003, published on October 21, 2004, and later abandoned. The earliest priority date of the reference, which coincided with its filing date, was 2003, whereas the earliest possible priority date of the patent at issue was 2004. The reference was, however, published in October of 2004, which was after the priority date of the patent in February of the same year.

Relevant Statutes

Two statutes were in play: U.S.C. 311(b) and U.S.C. 102(e); both the pre-America Invent Act (AIA) versions. The pre-AIA 35 U.S.C. 311(b) pertains to inter partes review (IPR) proceedings before the PTAB and states: “(b) SCOPE.—A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Appendix L – Patent Laws. On the other hand, the pre-AIA 35 U.S.C. 102(e) considers a U.S. patent application publication to be prior art as of the date of its filing (or priority) against a subsequently filed application even when the earlier filed application was not publicly available when the subsequent application was filed.

Lynk Labs

Elevating 35 U.S.C. 311(b) over 35 U.S.C. 102(e), Lynk Labs argued that, in an IPR, Martin could not serve as a prior art printed publication because although Martin was filed before the patent’s priority date, it became publicly accessible only as of its publication date which was after the priority date of the patent. Lynk Labs relied on the fact that other types of printed publications, like books and articles, had to be published and publicly available in order to be considered prior art under the pre-AIA 35 U.SC. 102(a) or (b). See here and here.. The U.S. Court of Appeals for the Federal Circuit (CAFC) and the PTAB both disagreed with this argument and decided that patents and patent applications can be considered prior art printed publications as of the date of their filing, not their publication.

Because Lynk Labs’ application was filed in 2019, more than a decade after the publication of the reference Martin in 2004, the reference had been available at the filing and during the examination of the application that became the Lynk Labs patent. The reference had been published even at the filing of the ordinary patent application parent in 2005. However, the problem of having to deal with prior art that was filed before the filing of a patent application but that became publicly available after examination, and perhaps issuance of the application into a patent, is not uncommon.

A Prior Art Problem

Prior art references can fall in the submarine category consisting of patents and patent applications that are filed before the priority date of an application but published after. These patents or patent applications were considered prior art under pre-AIA 35 U.S.C. 102(e) and are still considered prior art under AIA 35 U.S.C. 102(a)(2). The prior art used during examination includes and, at times, consists primarily of previously issued patents and published U.S. patent applications that are available on the USPTO internal databases, whereas, most but not all of U.S. patent applications that could potentially serve as prior art are published 18 months after filing.

One statute, the 18-month publication requirement under 35 U.S.C. 122, prescribes that applications for patents shall be kept in confidence by the USPTO and then published after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought.. The publication after 18 months from filing is not a sure thing and, aside from the exceptions set by law, an applicant may request nonpublication in which case the application is published when it issues into a patent.. Nevertheless, the default is publication, and the majority of the applications are published after 18 months. One website estimates the number of applications with a nonpublication request at less than 9% of total applications filed for a period of few months in 2018.. The other five large national intellectual property offices (IP5) also each have an 18-month publication date..

Another statute, the patent term adjustment under 35 U.S.C. 154, requires that the first office action be mailed 14 months after the filing of the application.. And the USPTO has been actively trying to reduce the pendency to bring the time from filing to first Office action within the mandated period..

Complying with the patent term adjustment statute requires that the first Office action is mailed within 14 months after the filing of the application. This is four months before the most recent prior art is accessible to the examiner. Considering that preparing and mailing of the first Office action is not instantaneous, it will be closer to six months or more of prior art that is invisible at the time of the first Office action every time the 14-month goal is achieved. The pendency goal of the patent term adjustment statute, therefore, leads to examination when not all of the U.S. filed applications heading toward publication have become available.

Finding Balance

Notably, there are a variety of expedited prosecution paths, including the Global IP5 Patent Prosecution Highway (PPH) pilot, all of which begin the examination process when more than a year’s worth of prior art is still unavailable. In such situations, a balance may be struck by conducting an extra elaborate search. Prior art for patent applications that are directed to theoretical and cutting-edge inventions are likely to be available in the form of non-patent literature (NPL) documents such as scientific journals and conference proceedings. On the other hand, for patent applications that are directed to modes of implementation of a newly discovered breakthrough, the more pertinent prior art will likely be another patent application. For these types of applications, a reduction in pendency to below 20 months, which includes the 18 months needed for publication of prior art plus some time allowed for examination and mailing, can lead to patents that issue before the bulk of the more recently filed prior art is available for consideration by the examiner.

As of March 2025, the USPTO’s patent application pendency data shows an average of 22.5 months from filing to the first Office action.. Thus, the USPTO has not achieved its pendency goals and to date most of the patent applications are examined after 18 months from filing, when most of the prior U.S. patent applications have been published and are accessible to the examiner. As various initiatives that attempt to lower the pendency succeed, it will help the quality of examination if the statute that sets the publication at 18 months is kept in view or addressed by the legislature.

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Author: Olivier26
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