4 YALE SYMP. L. & TECH. art. no. 7
The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) have produced much terror among patent practitioners. The AIPA provides for a compensatory extension of patent term due to delays in the examination process. Such delays may result from a variety of events including the failure of the U.S. Patent and Trademark Office (PTO) to take certain actions within certain relative or absolute time periods. The AIPA, however, provides for a reduction in the term extension when the applicant fails to take certain actions within specified time periods, typically shorter than the applicable statutory or shortened statutory periods for taking such actions. Due, in all likelihood, to sloppy drafting, the AIPA provides such reduction even when the applicant’s failure to act expeditiously contributed to neither a delay in patent issuance, nor the inability of the PTO to meet a deadline.
Many practitioners have expressed dismay at the practice implications of the AIPA’s term adjustment provisions. Some assert that a need for compliance with the shorter time periods will significantly impact their practices. I disagree. In this note I argue that the term adjustment provisions of the AIPA are not revolutionary in presenting practitioners with considerations of how prosecution may affect patent term. Furthermore, the benefits of adherence to extension-friendly deadlines under the AIPA are largely speculative.
