Well-informed, experienced patent attorneys strive to respond to office actions as quickly as possible. Office actions on a patent application are issued from patent examiners at the USPTO. Getting a patent is a balancing act between two objectives:

  1. having a patent that is narrow enough to be valid over the prior art; and
  2. having a patent that is broad enough to capture infringing products and activities.

In most cases, the patent examiner concedes the invention is new and useful but wants to make sure the patent claims are balanced. After all, the patent grant is a powerful legal right….a 20-year monopoly and restraint of trade.

It is human nature to forget

Short and long term memory are distinct features of the human brain and patent examiners still have hundreds of thousands of backlogged cases. For any individual patent examiner, your application may be one of hundreds he or she is assigned to. Quickly responding to office actions improves the chance the case will keep moving along.

If we wait until the 3-month statutory deadline to respond (or longer with
extensions) we lose the opportunity to return the case to the examiner while the application is still fresh in their mind. If an examiner picks up our response many months later it is like starting over from the beginning.

Don’t Lose Patent Term

Prior to June 8, 1995 patents enjoyed a 17-year term from the date of issue. Therefore, we were not in such a hurry to respond to office actions. However, patent terms are currently 20-years from the date of filing. Therefore, the length of usable patent term is diminished by delay. Consequently, if you do not respond quickly to patent office actions you are giving up potentially valuable patent term.

Contact us Now and Keep the Momentum

Do not delay…work with your patent counsel to promptly respond to your pending office action.

Generally speaking, a utility patent will expire 20 years from its filing date. The filing date extends back to the earliest related patent application. The earliest related patent application will include foreign applications. However, provisional applications are excluded from the calculation.

A plant patent also expires 20 years from the filing date of the patent application. In contrast, a design patent expires 15 years from its issue date. 

There are also several factors that can affect the term of a patent. These factors include, whether the patent claims priority to other applications, whether the patent is subject to a terminal disclaimer, whether the U.S. Patent and Trademark Office added any patent term, and whether the patent owner has paid the necessary maintenance or annuity fees.

Regardless of the type of patent, all patents will eventually expire. Once expired, the disclosed information disclosed becomes part of the public domain. This means that the information contained in the patent is public property and can be used freely by anyone. To confirm, you cannot refile or renew your patent after it runs its full 20-year term (15-year if a design patent).

You should consult an experienced patent attorney to determine when a patent will expire. Feel free to contact Smith & Hopen for additional information.

Category: Patent

Leave a Reply

Your email address will not be published.

This site uses Akismet to reduce spam. Learn how your comment data is processed.

Anton Hopen

U.S. Patent Attorney with smithhopen.com.