Patent Term Tailoring

Abstract

Patent rights are designed to encourage innovation with both the promise of a patent and with its expiration. Currently, patent term lasts from issuance until twenty years from the application date, with minor exceptions. The patent term is limited so that rewards for past invention do not overly hinder future progress. Although the goal is laudable, a uniform patent term is a blunt instrument to achieve such a nuanced balance. Historically, the patent system was not averse to tailoring terms through, for example, individually granted extensions to undercompensated inventors or term curtailment when a foreign patent holder failed to “work” a patented invention in the country. Currently, patent extensions are primarily granted to counteract time spent on administrative processes, and patent terms may be curtailed only by a patent holder through failure to pay maintenance fees or terminal disclaimer.

This Article examines current and historical law and doctrine affecting patent duration and suggests changes to better pursue patent policies, making two contributions to the literature. First, this Article groups together all the various term tailoring mechanisms for analysis, bringing theoretical consistency to analysis of rules that are often considered and analyzed separately. This grouping suggests potential avenues for reform, which is the second contribution. This Article argues that patent maintenance fees are an underused policy lever that allow patent holders rather than administrative agencies to evaluate the worth of inventions, ex post, and choose among simple term curtailment options, lowering third party costs. At the same time, patent term extension and adjustment result in variable extensions and potential term variations globally, while expedited examination remains an underused policy tool. These extensions, too, are ripe for modifications.

Keywords: patent law, patent term, maintenance fees, patent term adjustment, patent term extension, patent term adjustment