Before the USPTO was subject to a hiring freeze, it assumed it would onboard 400 new examiners between fiscal year 2025 and fiscal year 2026, and still predicted an increase in the backlog of unexamined patent applications. With a hiring freeze in place, the current backlog at nearly 838,000 unexamined patent applications, and the wait for initial examination already over 20 months, applicants can expect the time required to obtain a patent to increase. While these delays may not be ideal, applicants can leverage them to their advantage by maximizing patent term through patent term adjustment (PTA) awards.
USPTO Examination Delays Result in PTA Awards
By statute, the USPTO must award patent term adjustment when it fails to meet certain examination timeline metrics, including issuing a first Office Action within 14 months and taking no more than three years to grant a patent. USPTO PTA statistics from January 2025 show that barely 30% of patent applications are being examined within 14 months, and the number of patents taking more than three years to grant is at a two-year high of over 20%. Assuming patent application filings maintain their current level or (more likely) increase, more patents could be eligible for longer PTA awards.
Avoiding PTA Deductions for Applicant Delay
Not all USPTO delays result in PTA awards. The final PTA calculation subtracts any “applicant delay” from USPTO delay. Applicants seeking to maximize patent term should take care to minimize PTA deductions, including by:
- Ensuring a compliant Sequence Listing is filed within eight months of the application filing date or national stage commencement date
- Avoiding filing a preliminary amendment or other preliminary paper more than eight months after the filing date (or national stage commencement date) and less than one month before the mailing of an Office Action
- Understanding how Information Disclosure Statement (IDS) rules differ from PTA rules and timing IDS submissions to minimize PTA deductions
Currently, U.S. national stage applications (based on PCT applications) experience much longer early-stage processing delays than directly filed U.S. applications (on the order of months to years). If this trend continues, opting to pursue a U.S. patent via the PCT/national stage route could be another approach to earn significant PTA.
Avoiding Terminal Disclaimers That Override PTA
Even if a patent is awarded significant PTA, entitlement to that extended term could be in jeopardy if a terminal disclaimer is filed over a patent with a shorter term. To avoid leaving PTA on the table, applicants should consider portfolio development strategies that minimize the need for terminal disclaimers, such as by:
- Including multiple independent claims in an original application to trigger restriction requirements
- Responding to restriction and election of species requirements without traverse to preserve the right to file divisional applications
- Filing true divisional applications entitled to the protections of 35 U.S.C. 121 against obviousness-type double patenting (OTDP), and invoking the safe harbor of 35 U.S.C. 121 as a defense to OTDP
- Appealing weak rejections instead of filing RCEs to earn PTA from favorable appeal decisions and avoid the PTA implications of RCEs
- Minimizing voluntary continuation applications that can raise OTDP issues
- Understanding the contours of recent Federal Circuit decisions such as Cellect and Allergan on the interplay between OTDP, terminal disclaimers, and PTA
While USPTO examination delays may present challenges for stakeholders building their patent portfolios, they also present opportunities to maximize value through longer patent terms. By pursuing strategies that minimize PTA deductions and preserve PTA awards, applicants can significantly extend the life of their patents, potentially creating additional opportunities to capitalize on their innovations. As USPTO examination delays continue to grow, effectively leveraging them to maximize patent term could provide a competitive edge in the market, especially in industries such as biotechnology and pharmaceuticals, where long-term patent protection can be important.
To learn more about patent term adjustment and how you can leverage USPTO delays to your advantage, reach out to your contact at Foley or any of the authors.
