Strategies to Leverage Patent Term Adjustment to Add Value to Your Company’s Patent Portfolio

Jan 26, 2026

By John Sears, Partner

Lex Generalis

Introduction

At Lex Generalis, we work with innovators, founders, and research-driven companies navigating complex U.S. patent law to protect their innovations from competition and create business advantage. By default, patents provide for 20 years of exclusivity (the patent term) measured from the patents earliest non-provisional filing date. In some industries, the standard 20-year patent term is already longer than the useful life of the patent. But in other cases, where there are long development and go-to-market timelines, every day of patent term can add value to the patent portfolio and to the company.

It would therefore be reasonable to ask if there are mechanisms to increase the patent term for these valuable company assets. Under U.S. patent law, there are two primary mechanisms for extending the standard patent term: (i) patent term adjustment (PTA) under 35 U.S.C. § 154(b), which compensates for delays by the USPTO during patent prosecution and (ii) Patent Term Extension (PTE) under 35 U.S.C. § 156, which grants additional patent term to compensate for lengthy regulatory review of products like drugs and medical devices.

Because even a few extra months of exclusivity can translate into substantial revenue and stronger competitive differentiation, strategies that increase PTA or PTE can significantly increase the value of your patent portfolio. For therapeutics, a single day of additional patent term can be worth millions.

Here, I hope to introduce the PTA framework and share concrete strategies that companies can use to maximize patent term. Whether your company is preparing to file its first patent application or refining an existing IP strategy, PTA should be a consideration to enhance portfolio value.

What Is Patent Term Adjustment (PTA)?

PTA exists to compensate applicants for examination delays caused by the United States Patent and Trademark Office (USPTO). Under 35 U.S.C. § 154(b), a patent is eligible for additional term if the USPTO does not meet specific statutory deadlines.

The standard 20-year patent term begins on the application’s earliest non-provisional filing date. PTA extends that term when the USPTO takes longer than the law allows to examine and issue the patent.

How PTA Is Calculated

PTA is based on three categories of USPTO delay:

Type A Delays

These occur when the USPTO misses specific deadlines, such as issuing a first office action within 14 months (37 CFR § 1.702(a)). Every day over the limit adds to PTA. Recent statistics show that only a minority of applications receive first action within the required timeframe.

Type B Delays

If the total pendency exceeds three years (37 CFR § 1.702(b)), the extra days count toward PTA (excluding applicant-requested delays, appeals, or interferences). This calculation does not include periods of suspension requested by the applicant, appeals, or interferences.

Type C Delays

These arise from successful appeals, secrecy orders, or interferences (37 CFR § 1.702(c)). Successful appeals can generate significant PTA.

Overlapping delays are not double counted. The USPTO calculates delays in a way that prevents duplication but still maximizes benefit for applicants. The total non-overlapping PTA is then reduced by any applicant-caused delay, as detailed in (MPEP § 2733).

Strategies to Maximize PTA

At Lex Generalis, PTA maximization is part of our broader approach to strategic patent prosecution. Because any applicant delays will directly reduce the PTA, not taking extensions that cause applicant delay is a starting point. Additionally, the following practices can substantially increase the patent term awarded on issuance.

1. Prepare Complete and Compliant Filings Early

Applications must be complete, including all drawings, sequence listings, and other formal requirements within 8 months of filing or entering the national phase. Even timely responses to a notice to file corrected application papers can result in significant applicant delay when the notice is issued after the 8-month window–see the Lundbeck A/S v. USPTO case as an example. Preparing complete filings from the outset preserves future patent term and reduces administrative risk.

2. Respond Within the Standard 3-Month Window
USPTO office actions typically allow a 3-month shortened statutory period. Filing within this window avoids applicant-caused delay. Extensions almost always reduce PTA except in limited circumstances discussed below. There’s no need to respond early—just avoid unnecessary extensions.
3. Submit Fully Complete Responses

Any omission (missing fee, missing attachment, incorrect format) may trigger a notice of non-compliance. Even if corrected quickly, the initial error causes applicant delay that reduces PTA.

Thorough review before filing is essential.

4. Use Extensions Only When They Increase PTA

Although extensions usually reduce PTA, there are strategic exceptions:

    • Restriction requirements: When the USPTO issues a Restriction Requirement with a 2-month shortened statutory period for response, by filing at the 3-month date (with a 1-month extension) you increase Type B delay without increasing applicant delay.
    • Appeal briefs: An appeal brief is initially due within 2 months from the filing of a notice of appeal, with extensions available to extend the deadline up to a total of 7 months. Taking a 1-month extension and filing at the end of the 3-month date can create additional Type C delay without adding to the applicant delay.

These are nuanced situations where professional guidance helps ensure timing to maximize patent term.

5. File IDS Statements Promptly and Within Safe Harbor Rules
Information Disclosure Statements must be filed within specific windows to avoid reducing PTA. The safe harbor of 37 CFR § 1.97 allows applicants to avoid PTA loss when filing within three months of learning of a reference. Even timely IDS filings can inadvertently reduce PTA if not carefully timed.
6. Take Advantage of Appeals When Appropriate
Appeals are powerful PTA generators. USPTO appeal statistics show that successful appeals can add roughly 12 months of patent term on average. If a rejection is substantively weak, appealing may provide both stronger claims and additional patent life.
7. Consider CIPs Strategically in Life Sciences
Continuation-in-Part (CIP) applications are not always recommended. However, in biotech and pharma, new supporting data may justify a CIP and influence PTA due to the USPTO’s docketing practices.
8. Accept Telephonic Restrictions to Preserve PTA
Responding to examiners during telephonic restriction requests keeps the PTA clock running. Forcing written restrictions typically pauses the 14-month clock earlier, reducing PTA. Examiners usually provide 1–2 days for attorney–client consultation.
9. Don’t Default to Terminal Disclaimers
Challenging obviousness-type double patenting rejections may preserve PTA, especially when the potential term loss is significant. While challenging OTDP can introduce some risk, the PTA gains may justify it.
10. Avoid After-Allowance Filings When Possible
Post-allowance filings—amendments, declarations, updated drawings—are often considered failure to “engage in reasonable efforts” and typically reduce PTA. Only essential post-allowance filings should be made.
When You Truly Could Not Respond Within Three Months

Under certain circumstances, applicants may petition to excuse unavoidable delay (MPEP § 2734) such as:

    • Natural disasters
    • Required testing that takes more than 3 months
    • Illness or death of the sole practitioner handling the case

These petitions must be filed before patent issuance.

If the USPTO Miscalculates the PTA

Applicants can challenge PTA determinations through a petition under 37 CFR § 1.705 within two months of issuance. If denied, applicants may appeal to U.S. District Court within 180 days.

Acting quickly is essential, both deadlines are strict.

Conclusion
Patent Term Adjustment can be strategically managed to significantly enhance a company’s IP value, competitive advantage, and long-term commercial potential. At Lex Generalis, we help startups, research institutions, and investors proactively incorporate PTA enhancement into their patent strategy, transforming additional days of exclusivity into real business value. If you need guidance on maximizing PTA or strengthening your IP strategy, reach out to me or the Lex Generalis team. Your intellectual property is an asset, let’s ensure it receives the full protection it deserves.