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Author Topic: Conflict between terminal disclaimer and patent term adjustment  (Read 7297 times)

bartmans

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Consider the following siatuation:
parent application A filed on 1 July 2000, granted on 1 July 2004 (wll have as expiry date 1 July 2020).
From application A a divisional B has been filed on 1 April 2004, which is granted on 1 April 2010, but with a terminal disclaimer and a patent term adjustment of 365 days.

What is now the expiry date of divisional B? Is that 1 July 2020 (i.e. the same as the parent application A on basis of the terminal disclaimer), or is it 1 July 2021 (the PTA added to the normal term)?
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joeinventor

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Should be 1 july 2020 per USC35 section 154.
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bartmans

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Thanks for the answer.
Now to ask an additional question: what if the parent also had a PTA of 182 days (half a year), which would bring the expiry date of the parent to 1 Janauary 2021.
Would the divisional with the terminal disclaimer still expire on 1 July 2020 or does it profit from the fact that in both applications a PTA is present and thus would expire together with the parent on 1 January 2021?
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mohsinalmighty

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Divisional patent B would have benefit from PTA of patent A.
New expiry of patent B would be 1 January 2021.

PTA of B would be consider up to the MAXIMUM (including PTA) expiry of A.
To further clarify, suppose PTA accorded to A is 2 year then expiry of Patent B would be 1 July 2021 (that is its original expiry + 1 year of PTA granted to B, in this case patent B would have full benefit of its PTA, as new expiry date is not crossing expiry date of A[1-July-2022]).

If we take it other way around, lets assume, PTA obtained by A is 1 year and PTA obtained by B is 2 years, then expiry of patent B would be 1-July-2021 (In this case patent B can get benefit of 1 year to total PTA awarded to it)

Please go through this review article, it would give support to my answers.
"Patent Term Adjustment and Terminal Disclaimers: Are the Terms of Patents Being Decided Ad Hoc?" by Emily M. Hinkens

P.S.: Review article is freely available on internet.
« Last Edit: 07-22-13 at 01:09 am by mohsinalmighty »
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Origiin

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Conflict between terminal disclaimer and patent term adjustment
A statement that causes a second patent to expire on the same date as a first patent. Where two patent applications by the same inventor or joint inventors have been found to include substantially the same invention, and a finding of double patenting has been made, the filing of a terminal disclaimer allows the second patent to issue with an expiration date that coincides with the expiration date of the first patent.
  The patent term in the United States was changed in 1995 to bring U.S. patent law into conformity with the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) as negotiated in the Uruguay Round. As a side effect, it is no longer possible to maintain submarine patents in the U.S., since the patent term now depends on the priority date, not the issue date.
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Ex Officio

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That article was encouraging ... thanks for that.  The patent in question in that case would seem to be a pretty obvious solution even for somebody outside the auto industry.
Nice try, comrade.
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