New Patent Term Adjustment – A Deduction

The new Patent Law provides applicants with additional opportunities to delay the examination process, by filing an application without any claims and by filing an application merely by reference to a prior-filed application. However, the US Patent Office has decided to require that an application should be placed in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application) or else be subject to a patent term deduction.

Specifically, the US Patent Office proposes to amend the Rules which state that failure to provide an application in condition for examination within eight months from either the date on which the application was filed or the date of commencement of the national stage in an international application, will subject any subsequently-issuing patent to an adjustment of its term, reduced by the number of days beginning on the day after the date that is eight months from either the date on which the application was filed or the date of commencement of the national stage in an international application and ending on the date the application is in condition for examination.

And although the Patent Law Treaty Implementation Act amendments may simplify the initial requirements for filing a patent application, some of the changes do not reflect what may be considered as “best practices,” and may jeopardize certain otherwise-available patent rights. For example, if a patent application is filed without claims, optionally without drawings, the question may later arise regarding whether the application as filed adequately describes and enables the eventually claimed subject matter. There may also be issues with new matter regarding later-filed drawings. Still, such relaxation of the content required for receiving a filing date may benefit some applicants who are unable to submit such information at the time the application is filed.

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