Legal Definitions - patent-term extension

A patent-term extension refers to additional time added to the standard duration of a patent. This extension is granted to compensate inventors for certain administrative delays that occurred during the patent application process, which effectively reduced the effective commercial life of their invention. These delays could include situations like disputes over inventorship (interferences), government-mandated secrecy orders, or lengthy appeal processes. This specific type of extension was applicable to utility and plant patents issued within a particular timeframe: after June 7, 1995, and before May 29, 2000, with a maximum possible extension of five years.

• Example 1: Delay Due to a Secrecy Order

  Imagine an inventor, Dr. Aris Thorne, developed a novel propulsion system for spacecraft in 1996 and filed for a utility patent. Due to the sensitive nature of the technology, the U.S. government issued a secrecy order, preventing the patent from being granted or publicly disclosed for three years while they assessed its national security implications. Once the secrecy order was lifted, the patent was finally issued in 1999. Dr. Thorne could apply for a patent-term extension to recover some of the three years during which his invention was under a secrecy order and could not be commercialized.

  Explanation: This example illustrates a patent-term extension being granted to compensate for time lost due to a government-mandated "secrecy order," which is one of the specific administrative delays mentioned in the definition. The patent was issued within the specified timeframe (1995-2000).

• Example 2: Delay Due to an Interference Proceeding

  In 1997, two independent inventors, Ms. Chen and Mr. Rodriguez, both filed patent applications for very similar methods of purifying water. The U.S. Patent and Trademark Office (USPTO) initiated an "interference proceeding" to determine who was the first to invent the technology. This legal dispute lasted for four years. Eventually, Ms. Chen was determined to be the first inventor, and her patent was issued in 2001 (though the application was filed in 1997, the issuance date is key here, so let's adjust to fit the window). Let's say Ms. Chen's patent was issued in 1998, but the interference proceeding, which started in 1997, significantly delayed the final grant and effective commercialization. She could seek an extension to compensate for the time her patent's commercial life was effectively on hold due to the interference.

  Explanation: This scenario demonstrates a patent-term extension being sought due to an "interference" proceeding, a complex administrative delay where the USPTO determines priority of invention between two competing applicants. The patent's issuance date falls within the eligible window.

• Example 3: Delay Due to a Lengthy Appeal Process

  A company, BioGen Innovations, filed a patent application in 1995 for a new plant variety that was resistant to a common agricultural pest. The patent examiner initially rejected several key claims, leading BioGen to pursue a lengthy appeal process through the USPTO's Board of Patent Appeals and Interferences. This appeal took three years to resolve, during which BioGen could not fully market or license its innovative plant. The patent was finally granted in 1998 after a successful appeal. BioGen could then apply for a patent-term extension to recoup some of the three years lost during the administrative appeal.

  Explanation: This example illustrates a patent-term extension being applied for due to delays caused by an "appeal" process within the USPTO, another specified administrative delay. The plant patent was issued within the defined timeframe (1995-2000).