Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Adjustments (4)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
And Extensions (4)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
MPEP 2700 – Patent Terms (4)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
MPEP 2701 – Patent Term (1)
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
MPEP 2731 – Period Of Adjustment (1)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
MPEP 2732 – Reduction Of Period Of Adjustment Of Patent Term (1)
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
MPEP 2751 – Eligibility Requirements (1)
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
Patent Law (4)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
Patent Procedure (4)
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731:
“37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“
This means that if a patent applicant has filed a terminal disclaimer, agreeing that the patent will expire on a certain date (typically to avoid a double patenting rejection), the PTA cannot extend the patent term beyond that date. The terminal disclaimer effectively sets an upper limit on the total term of the patent, regardless of any delays that might otherwise qualify for PTA.
It’s important for applicants to consider the potential impact on PTA when deciding whether to file a terminal disclaimer, especially in cases where significant USPTO delays have occurred during prosecution. In some cases, it may be advantageous to address double patenting issues through other means if preserving PTA is a priority.
To learn more:
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
For patent term extension purposes, the term “product” is defined in 35 U.S.C. 156(f) as:
- The active ingredient of a new human drug, antibiotic drug, or human biological product
- The active ingredient of a new animal drug or veterinary biological product (with certain limitations on manufacturing processes)
- Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act
Importantly, a “product” refers to the active ingredient found in the final dosage form prior to administration, not the resultant form after administration. The MPEP clarifies:
“A ‘drug product’ means the active ingredient found in the final dosage form prior to administration of the product to the patient, not the resultant form the drug may take after administration.”
Different forms of the same chemical moiety (e.g., salt vs. ester) may be considered different products for extension purposes, even if used to treat the same condition.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more: