Patent Applications and Terms

Mailer | October 2016

Today, there is a considerable variety of patent applications and it can often be a daunting task to recall and keep track of all of them. Patent Offices across the globe use terminologies that are foreign to many of us and more often than not, novice inventors and IP managers find it difficult to keep up with the webof patent applications, its kinds and their respective durations of enforceability.

While the Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) under Article 33, mandated a universal term of 20 years from the date of filing, there are countries which have granted extensions to patent terms and have also provided for patent term adjustments. Ergo, determining patent terms becomes an even more complicated assignment, in the presence of dense legalese.

The duration of enforceability of a patent is one of its most important aspects because it plays a crucial role in Licensing and Litigation amongst many other things. In case of patent licensing, the value of each license depends on term of right to exclude and for litigation, patent term largely affects availability of injunctions, royalty amount and damages. Therefore, the determination of a life of a patent is necessary for critical legal and business decision making process. Though there is a standard term of 20 years agreed by countries, patent terms are affected by the types of applications that are filed in Patent Offices across the world.

Types of Patent Applications

Ordinary Application: Any application filed with a patent office without making any reference to any other existing applications under process with the Patent Office is referred as an Ordinary Application.

Convention Application: When a patent applicant claims priority from a same or substantially similar patent application from one or more countries which are parties to convention(s), such application is called a Convention Application. To achieve a convention status, a patent applicant must file the application within 12 months from the date of first application made in a convention country.

Provisional Application: Due to widespread competition, it becomes critically important to file a patent application as soon as possible. To secure the ‘priority date’, patent applicants can file non-final applications which adequately describe their invention. Such an application is called a provisional application. This then has to be followed by a Complete Specification within a period of twelve months from the date of filing of first application.

PCT-International Phase Application: The Patent Cooperation Treaty (PCT) provides a unified procedure for filing patent applications and seeking patent protection in up to 150 member countries. The date of filing of the international application is recognized as the priority date internationally in all designated countries.

PCT-National Phase Application: Once a patent applicant files the PCT International Phase Application, the patent applicant can file the patent application in all designated states separately within the time limit of 31 months (in most countries) from international filing date or the priority date (whichever is earlier).

Divisional Application: When a patent applicant discovers on his own or through a patent office’s direction that the claims relates to more than one inventive concept, the applicant may divide the application and file it as two or more applications at the Patent office. This application, divided from a parent application, is known as a Divisional Application. The Priority date of a divisional application is same as the parent patent application.

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Continuation Application: This is a patent application that follows, and claims priority to, an earlier-filed patent application. The earlier-filed application is non-provisional and an applicant can pursue additional claims to the invention which has already been disclosed.

Continuation-In-Part (CIP) Applications: Such applications refer to substantially same specification as compared to the parent application filed by the applicant but this has additional subject matter which is not disclosed in the parent application. The claims which pertain to the disclosures of the parent application have a priority date of the parent application and the new claims will not share the same priority. The new claims are generally awarded priority date on which such claims are filed.

Patent of Addition: When an applicant files an application for any improvement or modification of a previous disclosure/invention in a complete specification which has been already applied for or has been granted a patent, such an application is referred to as Patent of Addition.

Reissue Application: When an unexpired patent is found to be defective for any reason and the patent is deemed wholly or partly inoperative or invalid, the patent applicant can surrender the defective patent and seek for a reissue patent which is defect free.

Utility Patent Application: these are also referred to as ‘petty patents’ or ‘innovation patents’ in many jurisdictions. Such applications are similar to Ordinary Patent Applications but are granted patent rights for incremental innovation for a short period time (6-12 years).

Determining Base Patent Terms – A brief overview:

Countries Patent Term in the Patent Term in Patent Term in Patent Term in Patent Term in Patent Term in United States of India Europe Australia Canada Japan Kinds of Applications America

Ordinary Application 20 years from the 20 years from the date 20 years as from the 20 years from the date 20 years from the date 20 years from the filing date of filing which is of filing. date of filing. But of filing. Patent term of filing. date. Extension of subject to patent term member countries are extendable only in case patent term by up to adjustments, terminal free to extend term of of pharmaceuticals. 5 years is available for disclaimers* and patent Patent. pharmaceuticals and term extensions. agricultural chemicals.

Convention Application 20 years from earliest 20 years from earliest 20 years from earliest 20 years from earliest 20 years from earliest 20 years from earliest date of filing in the US. date of filing in date of filing in date of filing in date of filing in date of filing in Convention country. Convention country. Convention country. Convention country. Convention country.

Provisional Application 20 years from the 20 years from the 20 years from the date 20 years from the date 20 years from the date No formal system date of filing of final earliest filing. Can of filing the complete of complete disclosure of filing of complete for filing provisional Non-provisional patent be post-dated for a application. of the invention. application. application. But application. period of 12 months applications can be until filing of complete filed provisionally and specification. the term of a patent is calculated from the date of filing of complete application.

PCT National Phase 20 years from the date of international filing. Nationalization of a PCT International Phase application deadline is 30 or 31 months in most countries. Application

Divisional Application 20 years from the date of filing of parent application.

Continuation 20 years from the N/A Application date of filing of the application.

Continuation in Part 20 years from the date N/A Application of original application. Added claims have varying priority.

Utility Model 10 years from the date N/A 6 years from the date Innovation Patents have N/A 10 years from the date Applications of filing. of filing. a term of 8 years from of filing. the date of filing.

* Terminal Disclaimers: In situations where a patent applicant has two patent applications where one claim is an obvious variation of the second patent/application and one application is citable as other’s prior art, a terminal disclosure application can be filed. This written statement by the applicant helps in fighting the double-patenting objection raised by the patent office and states that the applicant has disclaimed the period of the second issued patent that would extend beyond the expiration of the first patent. The second patent usually expires at the same time as the first in most cases, the extra portion having been disclaimed.

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Patent Term Extensions and Adjustments

United States of America: The US introduced a system called Patent Term Adjustments which was applicable in cases of unnecessary delays by the Patent Office during prosecution. In case of unnecessary delays by the patent applicant, the application is deemed abandoned/withdrawn. The applicant can fight it only under exceptional circumstances.

• The delays by the patent office are categorized into A, B and C delays. A delays occur when patent office isn’t responding promptly within prescribed deadlines. A delays are included in the patent term adjustment determination and is mailed as a part of Issue Notification Letter. B delays are the failure to issue patents within three years (the three year calculation is paused in cases of declaration of interferences, secrecy order and notice of appeal) from the date of filing or in case of PCT Applications, three years from the date of national phase and the C delay includes any other reasons such as interference proceedings, secrecy orders, and successful appellate reviews for the calculation of patent term adjustments. Patentee is entitled to the addition of ‘A Delays’ and ‘B Delays’ to the extent that they do not overlap. • In case of ‘overlap’ of delays- A and B delays overlap only if they occur on the same day (which can only occur after the application has been pending for at least 3 years).

Europe introduced a system of patent term extension through Supplementary Protection Certificates (SPCs) for products such as the Active Pharmaceutical Ingredients (APIs) which undergo assessment of safety and efficacy studies before market authorization. The exclusivity period of 20 years on certain products can be extendable up to 6 or 10 years depending upon the jurisdictions.

Japan: An extension period of up to five years can be requested by filing a written registration with the patent office. The extension may be allowed only in situations where the inventions unable to be worked due to approvals prescribed under law that are intended to ensure safety etc.

Australia: An extension period of up to 5 years is provided for pharmaceutical products on fulfillment of following conditions – • It should be a pharmaceutical product per se and make use of DNA recombinant technology. • The goods “containing, or consisting of, the substance” must be included in the Australian Register of Therapeutic Goods. • The “period beginning on the date of the patent and ending on the first regulatory approval date for the substance must be at least 5 years.

Lastly, it is evident from the above brief study that, calculation of patent terms is a complicated and technical procedure. But it is extremely necessary to appropriately estimate the life of a patent for crucial business related decisions. For example, Abbvie’s drug Humira sells for a whooping US $ 23.5 Million per day in the US! As soon as the patent expires, imitations may flood the market and the value of the patent will see a dramatic drop. It is therefore advisable that the term of patent be determined correctly, to reap maximum benefits stemming from genius innovations.