Errors in patent term adjustment (PTA) calculations are more common than you might think and can affect the duration of your patent protection. In this article, we share six essential tips to minimize patent term adjustment errors and ensure accurate calculation of patent expiry dates, ultimately maximizing your patent’s lifespan.
“Obtaining a patent is really just a small part of the full patent lifecycle. Effective administration is key to maximizing its lifespan and ensuring its return supports the research and development behind it. Our global team has over 45 years of experience, and that expertise allowed us to identify lifespan differences of up to 77 days. Patent admin is a complex, hands-on process, but there are some rules you can follow to get the most out of your IP.”
1. Understand the importance of a complete application
Filing a complete application is the first and most crucial step in minimizing PTA errors. Be sure that your application is in condition for examination from the outset. By including all necessary information and required documents, you can help avoid delays due to missing elements. A well-prepared application sets the foundation for a smooth examination process, reducing the likelihood of encountering issues that could cause discrepancies in patent term and patent expiry dates.
2. Respond promptly to Office actions
When you receive an Office action, respond promptly to maintain the momentum of your patent application. Ensure you know each patent office’s deadline for filing office action responses to avoid missing deadlines. Timely responses demonstrate your commitment to the process and help avoid unnecessary delays that could impact your patent term.
3. Limit time extensions
While it may be tempting to request extensions of time, try to avoid unnecessary extensions as they can significantly increase the applicant delay counted against your patent term. Each extension adds to the overall time taken to move your application to allowance, potentially reducing the life of your patent protection. Extension fees are costly and can add up – your clients will thank you when you file on-time responses, saving them money and minimizing delays.
4. Submit Information Disclosure Statements early
Submit your Information Disclosure Statement (IDS) promptly, either at the time of application filing or prior to receiving a first office action. Late disclosure of relevant prior art can lead to complications and additional scrutiny, which can extend the examination process. Early submission of IDS documents ensures that all relevant information is considered from the beginning, facilitating a smoother and faster examination (and a happier patent examiner).
5. Vigilantly monitor deadlines
Keeping track of all important deadlines is crucial to avoiding ‘trap’ situations that could lead to delays. However, monitoring all these deadlines can be burdensome, especially when filing across multiple jurisdictions or managing a large patent portfolio. Make sure you use a robust system for docketing that can monitor deadlines in one place and set reminders to stay on top of all critical dates, reducing the risk of inadvertent delays.
6. Review PTA calculations
Once your patent is allowed, it is important to carefully review the calculated patent term adjustment to identify any potential errors in PTO calculations. Mistakes in PTA calculations can affect the duration of your patent protection. By thoroughly reviewing the calculations, you can ensure that your patent term is accurately determined, providing you with the full benefit of your patent rights.
Conclusion
Minimizing PTA errors requires a proactive and diligent approach throughout the patent application process. By filing a complete application, responding promptly to office actions, limiting extensions of time, submitting IDS early, monitoring deadlines carefully and reviewing PTA calculations, you can significantly reduce the risk of delays and ensure a smoother path to securing your patent. Implementing these strategies will help you maximize the effective duration of your patent protection, providing greater value and security for your innovations.
Let’s discuss how Clarivate paralegal services can help you stay on top of essential patent dates.
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