Patent Term

What is the maximum patent term

European Patent:

According to Art.63 of the EPC, the term of a European patent “shall be 20 years from the date of filing of the application”. The relevant date is the actual filing date of the european application and not the priority date, if claimed (this is independent whether foreign or internal (previous european patent application) priority is claimed). No definition of how to compute the date of the start of the patent term and date of expiration (lapse) of the term is given in the EPC.[R.131 EPC defines the calculations of “periods” not “terms”.] Consequently, this is left to the contracting states to the EPC; some interpret the “from the date” that the day of filing is the first day of the patent term; in other contracting states, the patent term starts to run on the day following the day of filing. Some contracting states define the date of expiration as the last day of validity, for some other contracting states it is the first day of invalidity. Consequently, the date of lapse of the same European patent can differ by up to three days between the various contracting states.

A contracting state to the EPC can extend the patent term to take account of war or similar emergency conditions or to take account of administrative authorisation procedure required before market authorization.[Article 63 of the EPC, see also Q&A xx.]

US Utility Patent:

According to 35 U.S. 154, patent term is 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications). If a foreign priority is claimed, the relevant date is the actual U.S. filing date and not the foreign priority date (foreign priority).[35 U.S.C. 119, see also MPEP 213] Similarly if the priority of a provisional application is claimed, the relevant date is the actual filing date of the (regular) application and not the filing date of the provisional application (Internal priority).[35 U.S.C. 119(e), see also MPEP 211.01(a)] The patent term is calculated by adding twenty years to the date of the earliest related U.S. application (excluding provisional applications).[see “Calculating US Expiry Dates”, http://goo.gl/YNBa3i]

Patent term extensions or adjustments are possible if the USPTO fails to issue a patent within 3 years after the actual filing date of the application [35USC154(b)(B), see also MPEP2710] and/or due to delays due to derivation proceedings, secrecy orders and appeals [35USC154(b)(C), see also MPEP 2710] for utility and plant patents issuing on applications filed on or after June 8, 1995.

Patent term can also be extended to take account of premarket regulatory review.[35USC156, see also MPEP § 2750)]

Of course there is always the, mostly theoretical, possibility that Congress extends the patent term for a given patent through a private bill. A patent term for perpetuity would be excluded by Article I, Section 8, Clause 8 of the United States Constitution, which empowers Congress to grant “for limited Times to .. Inventors the exclusive Right to their … Discoveries.”

Notes & Comments:

– The above discussion assumes that all the required maintenance/renewal fees are paid.

– A twenty year patent term counted from the filing date is also required by the TRIPS Agreement.

– It can be assumed that all major trade treaties will require patent term extension or sui generis protection to take account of patent term lost due to administrative authorisation procedure required before market authorization if not already available.