Rick and Jason, it's fairly easy to understand why the patent information m=
arketplace is not awash with software for calculating expirations, term ext=
ensions, etc. It also reinforces the contributions of value-added patent d=
atabases and database producers, who incorporate or create post-issuance da=
ta changes into their databases, like IFI Legal Status or Lexis Lexpat. =
Of course, for critical patents, it's always worth doublechecking, reviewin=
g the file history in PAIR to see if any terminal disclaimers or term exten=
sion papers are included. Then, a short bout of meditative chanting may p=
rove calming.
Roy Zimmermann
Medtronic
________________________________
From: Rick Neifeld [mailto:rneifeld_at_neifeld.com]
Sent: Tuesday, February 19, 2008 9:48 AM
To: PIUG Discussion List @ Listbox
Cc: PIUG Discussion List @ Listbox
Subject: RE: [PIUG List] Calculation of US Patent Terms
To expand on the information provided below, clarify, and correct:
" I'm not sure if the PTO will even help you determine the actual expiratio=
n date for your patent." - Correct. In fact, they cannot, because that law=
may in the future change, which can affect term or previously issued paten=
ts.
"Alternatively, it gets the expiry date calculated using the new rules, if =
it is longer." Unclear what that meant; term is defined by statutory provis=
ions, not USPTO rules.
"17 years from grant, no term extension available under 35 USC 154, ..." - =
Only partially correct, in that extensions of up to 5 years are available d=
ue to procedural delays (successful appeal or interference including time o=
f any follow on court actions further delaying issuance). No more than 5 y=
ears extension (officially "patent term extension" PTA available under this=
provision. Also, this 35 USC 154 PTA subject to truncation by existence o=
f any terminal disclaimer.
"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 ca=
ses are subject to terminal disclaimers." - Incorrect. Regulatory approval=
delays under 35 USC 156 are NOT subject to truncation by the existence of =
a terminal disclaimer. They are added on to the disclaimer date, per Merck=
& Co., Inc. v. Hi-tech Pharmacal Co., Inc., Docket No. 2006-1401 (Fed. Cir=
. March 29, 2007).
"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 t=
erm which ends twenty years from the filing date of the international appli=
cation." - Despite the fact that this is a quote from the MPEP it is only p=
artially correct. The statute governs, not the MPEP. This statement is onl=
y correct if you interpret "granted on" to mean the earliest US non provisi=
onal application to which the issued patent claims priority. A US patent i=
ssued from a PCT application that claims priority to an earlier filed US no=
n provisional application will have a term based upon the filing date of th=
e earlier US non provisional application.
Thanks, RICK
Rick Neifeld, Ph.D. Patent Attorney
President
Neifeld IP Law, PC URL: www.Neifeld.com
StockPricePredictor.com, LLC URL: www.PatentValuePredictor.com
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
This email may contain privileged and confidential information. If you are=
not the intended recipient, delete this email and notify the sender.
-----Original Message-----
From: Fuller, Michael [mailto:mfuller_at_nerac.com]
Sent: Tuesday, February 19, 2008 10:28 AM
To: PIUG Discussion List @ Listbox
Cc: PIUG Discussion List @ Listbox
Subject: RE: [PIUG List] Calculation of US Patent Terms
Rodney,
I think the important parts of Jason's answer below (at least with respect =
to US patents) relate to 35 USC 154 and 156-these are the big "X factors" w=
hich are difficult to account for when calculating patent terms, and I'm no=
t sure if the PTO will even help you determine the actual expiration date f=
or your patent. If you think about it, miscalculating an expiration date f=
or a patent on a marketed product by even one day could mean potentially mi=
llions of dollars in lost revenue for either the patent holder or a generic=
manufacturer waiting for the patent to expire. Mike Fuller, Nerac
From: Jason White [mailto:jasonw_at_semiconductor.com]
Sent: Tuesday, February 19, 2008 10:08 AM
To: PIUG Discussion List @ Listbox
Cc: PIUG Discussion List @ Listbox
Subject: RE: [PIUG List] Calculation of US Patent Terms
Rodney,
Here's my understanding of the calculation of US patent terms. If I'm miss=
ing 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 a=
vailable under 35 USC 156 (regulatory approval delays)
Alternatively, it gets the expiry date calculated using the new rules, if i=
t 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 p=
atent 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 te=
rm which ends twenty years from the filing date of the international applic=
ation. A continuation or a continuation-in-part application claiming benefi=
t 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 ye=
ars 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 apologis=
e if it has been dealt with recently, though I could not find anything on i=
t on the list.
Does anyone know of a resources that can assist in calculating US Patent Te=
rms. Something like a database/program or even a "Dummies Guide" to calcul=
ating 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 mai=
ntenance 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 cal=
culating 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
------------------------------------------------------------------------
Important Notice:
This email transmission may contain confidential information and may be
legally privileged. This transmission is intended for use exclusively by
the addressee. If you are not the intended recipient please advise us
immediately and return the original message to us by post. We agree to
reimburse you for any costs involved. It is strictly prohibited to use,
copy, disseminate or distribute this transmission other than for the
purpose intended.
________________________________
________________________________
PIUG List owner: Patent Information Users' Group Inc. (R), http://www.piug.=
org<http://www.piug.org/>
PIUG List rules and guidelines: http://www.piug.org/list.php
PIUG List admin: piug_discussion_list-owner(at)v2(dot)listbox(dot)com
PIUG Discussion List @ Listbox | Modify<http://www.listbox.com/member/?&> Y=
Error! Filename not specified.<http://www.listbox.com>
________________________________
________________________________
PIUG List owner: Patent Information Users' Group Inc. (R), http://www.piug.=
org<http://www.piug.org/>
PIUG List rules and guidelines: http://www.piug.org/list.php
PIUG List admin: piug_discussion_list-owner(at)v2(dot)listbox(dot)com
PIUG Discussion List @ Listbox | Modify<http://www.listbox.com/member/?&> Y=
<http://www.listbox.com>
________________________________
________________________________
PIUG List owner: Patent Information Users' Group Inc. (R), http://www.piug.=
org<http://www.piug.org/>
PIUG List rules and guidelines: http://www.piug.org/list.php
PIUG List admin: piug_discussion_list-owner(at)v2(dot)listbox(dot)com
PIUG Discussion List @ Listbox | Modify<http://www.listbox.com/member/?&> Y=
<http://www.listbox.com>
________________________________
________________________________
PIUG List owner: Patent Information Users' Group Inc. (R), http://www.piug.=
org<http://www.piug.org/>
PIUG List rules and guidelines: http://www.piug.org/list.php
PIUG List admin: piug_discussion_list-owner(at)v2(dot)listbox(dot)com
PIUG Discussion List @ Listbox | Modify<http://www.listbox.com/member/?&> Y=
[9e3df65.jpg?uri=aHR0cHM6Ly93d3cubGlzdGJveC5jb20vaW1hZ2VzL2xpc3Rib3=
gtbG9nby1zbWFsbC5qcGc] <http://www.listbox.com>
[CONFIDENTIALITY AND PRIVACY NOTICE]
Information transmitted by this email is proprietary to Medtronic and is in=
tended for use only by the individual or entity to which it is addressed, a=
nd may contain information that is private, privileged, confidential or exe=
mpt from disclosure under applicable law. If you are not the intended recip=
ient or it appears that this mail has been forwarded to you without proper =
authority, you are notified that any use or dissemination of this informati=
on in any manner is strictly prohibited. In such cases, please delete this =
mail from your records.
To view this notice in other languages you can either select the following =
link or manually copy and paste the link into the address bar of a web brow=
ser: http://emaildisclaimer.medtronic.com
-------------------------------------------
-----------------------------------------------------------------------
PIUG List owner: Patent Information Users' Group Inc. (R), http://
www.piug.org
PIUG List rules and guidelines: http://www.piug.org/list.php
PIUG List admin: piug_discussion_list-owner(at)v2(dot)listbox(dot)com
PIUG Discussion List @ Listbox
3&id_secret=95852759-0bde51
_secret=95645000-d2a925
Received on Tue Feb 19 2008 - 18:53:11
This archive was generated by hypermail 2.2.0 : Thu Nov 20 2008 - 07:03:13