RE: [PIUG List] Calculation of US Patent Terms

Rodney,

 

Here's my understanding of the calculation of US patent terms. If I'm
missing anything, perhaps someone else from the list will chime in:

Applications filed before June 8, 1995:

17 years from grant, no term extension available under 35 USC 154, but
is available under 35 USC 156 (regulatory approval delays)

Alternatively, it gets the expiry date calculated using the new rules,
if it is longer.

 

Applications filed on or after June 8, 1995:

20 years from earliest US non-provisional application from which the
patent claims priority, including CIPs.

Term extension is available under 35 USC 154 to account for delays at
the patent office, and under 35 USC 156 for regulatory approval delays.

Both cases are subject to terminal disclaimers.

 

As for the PCT application question, the MPEP is quite helpful:

A patent granted on an international application filed on or after June
8, 1995 and which enters the national stage under 35 U.S.C. 371 will
have a term which ends twenty years from the filing date of the
international application. A continuation or a continuation-in-part
application claiming benefit under 35 U.S.C. 365(c) of an international
application filed under 35 U.S.C. 363 designating the United States will
have a term which ends twenty years from the filing date of the parent
international application.

http://www.uspto.gov/web/offices/pac/mpep/documents/2700_2701.htm

 

Regards,

Jason White

Intellectual Property Tools Manager

Semiconductor Insights

 

________________________________

From: Rodney Cruise [mailto:rodney.cruise_at_iporganisers.com.au]
Sent: Monday, February 18, 2008 6:04 PM
To: PIUG Discussion List @ Listbox
Subject: [PIUG List] Calculation of US Patent Terms

 

Hi All

 

I have been quite absent for the list in the last 12 months, so a big
HELLO to all fellow PIUG folk!

 

I have a question regarding the Calculation of US Patent Terms. I
apologise if it has been dealt with recently, though I could not find
anything on it on the list.

 

Does anyone know of a resources that can assist in calculating US Patent
Terms. Something like a database/program or even a "Dummies Guide" to
calculating US Patent Terms.

 

I find that some of the time they can relatively straight forward
affairs, however in other cases I am left scratching my head trying to
reconcile maintenance fees payment windows, with "first" filing dates
and abandoned PCT application etc etc......oh for a straight 20 year
term!!!!

 

I guess what I am looking for is a fairly foolproof "Ultimate Guide" to
calculating US Patent Terms.

 

Cheers

Rodney Cruise

 

Regards

Rodney Cruise
Manager | Patent Attorney

IP Organisers Pty Ltd
PO Box 323
Collins Street West 8007
Melbourne Vic Australia
Phone: +61 3 9614-1944
Fax: +61 3 9614-1867
Web: www.iporganisers.com.au
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Received on Tue Feb 19 2008 - 16:17:57