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[ouduke]

I have Patent A and Patent B...

Patent B is is a Continuation-In-Part of Patent A with a terminal disclaimer on it making Patent B automatically expire when A expires.

The problem is that somebody forgot to pay the maintenance fee on Patent A and it expired.  Is B also expired or does it get the expiration date that A would have naturally terminated if the fees were paid?

I really could use help with this, I looked through the MPEP and all through the relevant sections of Chisum.  Nothing really on point.

[JimIvey]

I took a quick look at the PTO form for terminal disclaimers of the sort that I think you used (my apologies if it's not quite right) -- PTO/SB/25.

In making the above disclaimer, the owner does not disclaim the terminal part of any patent granted on the instant application that would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of any patent granted on said reference application, “as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application,”  in the event that: any such patent: granted on the pending reference application: expires for failure to pay a maintenance fee, is held unenforceable, is found invalid by a court of competent jurisdiction, is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321, has all claims canceled by a reexamination certificate, is reissued, or  is in any manner terminated prior to the expiration of its full statutory term as shortened by any terminal disclaimer filed prior to its grant.

Regards.

[ouduke]

The plot thickens, I found the terminal disclaimer in question and it makes no mention of "full statutory term" or maintenance fees.  It essentially just says the expiration date of Patent B is tied to Patent A.  The fact that the USPTO proposed terminal disclaimer has a specific provision for maintenance fees and full statutory terms makes me think Patent B is invalid.  However, I just found a case (Pharma Corp. v. Par Pharm) where the Fed. Cir. Apps. states:

"if Pharmacia does not pay the maintenance fee on one of the patents, that oversight would have no effect on the validity or enforceability of the other patent".  But then they go on to quote the USPTO terminal disclaimer provision - which is not the form used in my litigation.  I guess I should give it up, but to be able to blow away this whole case in one motion is just too tempting to let go...

Thanks