Simon - Applications filed before June 8, 1995 have a term limited by
the greater of 17 years from issue or 20 years from the earliest of the
non provisional (35 USC 111(a) regular) application or PCT international
application's filing date to which the patent claims priority. That was
and is the law for the transitional period around June 8, 1995. Hence,
any application that issued in less than 3 years from its earliest US
non provisional (including PCT) filing date, had a bump up in its term
to 20 years from that date. Truth; but I am not going to take the time
to look up the old statutory and effective date provisions to cite this
for you.
FYI my article " <http://www.neifeld.com/advart4.html> Summary and
Analysis of the New Patent Laws Enacted November 29, 1999" Neifeld,
Richard, JPTOS, 82 (March 2000), 181. deals with the subsequent patent
term law change, but may be of interest to you. It is posted on my
firm's advanced IP articles page: http://www.neifeld.com/advidx.html
BTW, ignore rules, that is 37 CFR rules, when considering patent term.
Rule 62 was, I recall, the "file wrapper continuation" rule, but
irrelevant to patent term since patent term has always (generally! -with
the exception of where the statute gives the USPTO discretion to
interpret) been the province of statute, not rule.
Thanks, RICK
-----Original Message-----
From: Simon Ochsenbein [mailto:sochsenbein_at_metalstorm.com]
Sent: Tuesday, February 19, 2008 7:44 PM
To: Rick Neifeld
Subject: RE: [PIUG List] Calculation of US Patent Terms
Rick,
Years ago I seemed to be receiving conflicting opinions from various US
patent attorneys on patents that claimed benefit of applications filed
before the June 1995 cut-off. Some applied the 'greater of' rule and
some didn't. It was too time consuming to piece together all the ifo and
still is.
Current 35USC154(c)(1) - "The term of a patent that is in force on or
that results from an appli-cation filed before the date that is 6 months
after the date of the enactment of the Uruguay Round Agree-ments Act
shall be the greater of the ..."
So what is 'filed'? Something that has a filing date perhaps.
Current 37 CFR1.53(b) - "The filing date of an application for patent
filed under this section, except for a provi-sional application under
paragraph (c) of this section or a continued prosecution application
under para-graph (d) of this section, is the date on which a
speci-fication as prescribed ..."
37 CFR1.53(d) - now only applies to design patents.
37 CFR1.53(b) & 37 CFR1.53(d) went through a set of messy changes.
37 CFR1.53(b) on 10 Oct 1997.
37 CFR1.53(d) on 10 Oct 1997, 4 Feb 1998, 20 Mar 2000, 16 Aug 2000 and
finally on 30 May 2003 to limit it to design patents. My recollection
was that Divisionals and Continuations could be filed as CPAs for a
period after June 1995 whereby the 'filing date' was something
different.
There's a stack of info about all this at
http://www.uspto.gov/web/offices/pac/dapp/opla/frule/index.html which I
don't have time to go through. One doc from this USPTO websites implies
that rules 60 and 62 for filing continuing applications (continuations,
divisions and CiPs) were only eliminated in 1998
Do any of these old rules still apply to live applications and change
the calculation of the term?
It would be good to get this sorted in my mind once and for all.
Simon
_____
From: Rick Neifeld [mailto:rneifeld_at_neifeld.com]
Sent: Wednesday, 20 February 2008 1:48 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
expiration date for your patent." - Correct. In fact, they cannot,
because that law may in the future change, which can affect term or
previously issued patents.
"Alternatively, it gets the expiry date calculated using the new rules,
if it is longer." Unclear what that meant; term is defined by statutory
provisions, 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 due to procedural delays (successful appeal or interference
including time of any follow on court actions further delaying
issuance). No more than 5 years extension (officially "patent term
extension" PTA available under this provision. Also, this 35 USC 154
PTA subject to truncation by existence of 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 cases 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 term which ends twenty years from the filing date of the
international application." - Despite the fact that this is a quote from
the MPEP it is only partially correct. The statute governs, not the
MPEP. This statement is only correct if you interpret "granted on" to
mean the earliest US non provisional application to which the issued
patent claims priority. A US patent issued from a PCT application that
claims priority to an earlier filed US non provisional application will
have a term based upon the filing date of the 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" which are difficult to account for when calculating patent
terms, and I'm not sure if the PTO will even help you determine the
actual expiration date for your patent. If you think about it,
miscalculating an expiration date for a patent on a marketed product by
even one day could mean potentially millions 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
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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