In short, yes. The term of a patent is set by Congress, which is free to extend the term of an individual patent for a definite period of time. And then when this period is set to expire, it can kick the can further down the road, ad infinitum. This is known as ‘private relief’ or ‘private law.’ At the moment, I’m aware of three design patents that were issued in 1918 and are set to expire in 2020.
Great examples of ‘private relief’ in practice are three design patents that were originally granted in 1919, and are still in effect today. These patents cover the emblems and insignia on the badges of the American Legion, American Legion Auxiliary, and Sons of the American Legion. While these patents would have originally expired in 1933, they have been renewed like clockwork every 14 years or so by acts of Congress. The website for the Gerald R. Ford Presidential Library & Museum has thoughtfully preserved a copy of the legislation signed by Ford in 1976, extending the patents to 1990. The patents were last renewed as part of the National Defense Authorization Act that was signed in 2006, preserving the patents until at least 2020.
To learn more about whether it’s possible to have the term of your patent extended, contact the Law Office of Michael O’Brien by calling us at (916) 760-8265, or by sending us a message using our contact form.
Obviously, it’s pretty unlikely that your patent will be afforded special attention by Congress and the President of the United States. However, there are two other ways in which a patent can be extended.
Patent Term Adjustment
Sometimes, the Patent Office fails to issue a patent in a timely manner due to reasons beyond your control. Under the Patent Term Guarantee Act of 1999, when it’s found that a patent has been delayed due to error on the part of the USPTO, an inventor is to be reimbursed for those delays, in the form of a patent term adjustment (PTA).
There are three types of delays which are reimbursed:
- Failure to issue the first office action within 14 months of the application being filed, and delays of more than 4 months for any other office action.
- Failure to issue a patent within three years of the filing date.
- Delays incurred due to interferences, PTAB appeals, and secrecy orders.
Calculating these delays can be complex, and it’s advisable to refer to a patent attorney if you feel you’ve been significantly shortchanged.
Patent Term Restoration for FDA Regulatory Delays
Having a patent awarded for a new drug may only be the beginning of the process for a pharmaceutical company bringing a new product to market. The FDA approval process is grueling, and it can take years for a drug to be approved for mass market. As a result, the patent term for a drug may be significantly diminished by the time the drug hits store shelves.
To compensate pharmaceutical companies for this lost time, Congress passed Title II of the Drug Price Competition and Patent Term Restoration Act in 1984, and Generic Animal Drug and Patent Term Restoration Act in 1988. These acts created the Patent Term Restoration program, under which the FDA and USPTO can extend a patent term by up to 5 years, to compensate for time lost during the regulatory process.
Products eligible for the Patent Term Restoration program include:
- Human drug products
- Food additives
- Color additives
- Animal drug products
To take advantage of Patent Term Restoration, an application for patent extension must be filed with the USPTO within 60 days of a product being approved by the FDA. Bear in mind, this is the case even if the product cannot be marketed at that time (e.g. because of drug scheduling concerns).