On September 25, 2024, the United States Patent and Trademark Office (USPTO) issued a notice regarding a coding error impacting the USPTO patent term adjustment software. Specifically, according to the notice, because of a coding error, the patent term adjustment (PTA) on the face of certain patents issued from March 19, 2024, through July 30, 2024, may be incorrect.

Background

By statute, the term of a utility patent is twenty years from the earliest effective filing date. See 35 U.S.C. § 154(a)(2). If the USPTO does not adhere to specific statutory deadlines, the patent term may be subject to adjustment, thereby extending its duration. See 35 U.S.C. § 154(b). However, any PTA due to these USPTO delays is offset by the so-called Applicant Delay, which is “the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” See 35 U.S.C. § 154(b)(2)(C)(i). The USPTO delays are divided across three different categories:

1. A delay, which as specified in 35 U.S.C. § 154(b)(1)(A), accrues if the USPTO fails to issue an Office Action or Notice of Allowance within fourteen months of filing or commencement of national stage, fails to issue a patent within four months of issue fee payment, or fails to act on an application within four months of a Board decision or an Applicant’s response;
2. B delay, which as specified 35 U.S.C. § 154(b)(1)(B), accrues if the USPTO fails to issue a patent within three years after the filing date or national stage entry date excluding any time spent in continued examination, any time spent on a derivation proceeding, any appellate review; and
3. C delay, which as specified in 35 U.S.C. § 154(b)(1)(C), provides a day of PTA delay for each day the patent issuance is delayed due to derivation proceedings, secrecy orders, and appeals.

The total USPTO delay is determined by calculating A delay, B delay, and C delay to the extent applicable, excluding any overlapping periods of delay. See 35 U.S.C. § 154(b)(2). The USPTO uses a software for these calculations and lists the total PTA on the face of the patent.

Software Error May Have Impacted A Delay and Resultant Overlaps

According to the USPTO’s notice, the software error may have caused an incorrect calculation of the A delay and amount of overlap. The other PTA calculations under 35 U.S.C. 154(b) were not impacted by this error. The USPTO estimates that only one percent of patents issued from March 19, 2024, through July 30, 2024, are impacted.  Furthermore, “in many of the patents, the overall amount of PTA remains correct because the inaccurate amount of A delay equaled the inaccurate amount of ‘Overlap.’”

The notice fails to specify which part of the A delay is incorrect.  According to the USPTO’s PTA dashboard, currently, the most common form of A delay is failure to meet the 14-month window, with 68 percent of cases currently receiving this delay. The coding errors are likely in the rarer forms of A delay, such as failure to grant a patent within four months of issue fee payment.

Consideration for Patentees

For patents issued within the stipulated window, to the extent that the correctness of PTA determination has not yet been verified, patentees may want to consider doing so. If the A delay calculation is incorrect, a request for reconsideration may be warranted. Since the window for such requests for considerations for the earliest effected patents is rapidly closing, such verifications need to be done quickly.

The USPTO’s notice waives any fees for requests to correct mistakes in the PTA due to software errors. Specifically, the notice states that “any request for reconsideration where the sole reason for contesting the PTA determination in this patent is a calculation error in the amount of “A” delay and “Overlap” can be filed without a fee within seven months of the date the patent was granted.” Id. at 2. Thus, for the patents issued on March 19, 2024, patentees have until October 19, 2024, to file such requests.

If this window is missed, it may still be possible to correct the PTA by filing a terminal disclaimer under 37 C.F.R. § 1.321(b), but only if the software error resulted in a longer A delay. If the error resulted in a shorter A delay, it may be difficult for a patentee to correct. Patentees could still attempt to file a request for a certificate of correction but the USPTO’s notice does not indicate whether it would consider such a request.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.