Anthony R. Prosser

Patent Term Adjustment (PTA) is a statutory right established by the American Inventors Protection Act of 1999 and currently codified in 35 U.S.C. § 154. PTA provides additional days of patent term that are granted to patentees to compensate for administrative delays at the U.S. Patent and Trademark Office (USPTO). When a patent is granted, the USPTO applies a complex framework of rules to (1) determine the period of patent term adjustment (37 CFR 1.703); (2) reduce the period of adjustment for applicant delay (37 CFR 1.704); and (3) govern the issuance and challenging of PTA (37 CFR 1.705). The application of these rules is subject to shifting judicial precedent and their strict application creates “traps” which can subvert congressional intent.

Given current and ongoing economic realities, patent practitioners—both in-house and outside counsel—are constantly being asked to do more within existing budgets. Meanwhile, more robust patent applications thick with technical detail are necessary to satisfy courts and patent offices around the world. Working within budgetary constraints without sacrificing quality requires outside the box thinking and use of available tools to streamline as much of the process as possible. Enter Artificial Intelligence (AI), which is taking the world by storm, and recently garnered the attention of the American Bar Association, which has just announced the creation of a task force that will examine the impact of AI on law practice and the ethical implications of its use for lawyers.

In a June 20, 2022, article on IPWatchdog, I addressed a portion of the June 8, 2022, letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun  to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal requesting the USPTO to issue a notice of rulemaking or request for comments in the Federal Register by September 1, 2022, on curbing continuation practice as a means to address “patent thickets.”  As of the date of this article, the USPTO has not issued the notice. In this article, I, along with co-author Anthony Prosser, address the other issue raised in the Senators’ June 8 letter—whether elimination of terminal disclaimers that “allow” patents to issue that are “obvious variations of each other” would increase patent quality and whether patents that are tied by a terminal disclaimer should be considered an admission of obviousness and stand or fall together in litigation.