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Author Topic: Patent Term - Expiration date and time  (Read 264 times)

En-trance

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Patent Term - Expiration date and time
« on: 07-12-18 at 02:01 am »

Hi all,

I have been asked the following question and as I am not so sure, I would like to hear your thoughts:

Question:
If an U.S. patent was issued on January 10th, 2018, would the 20 years' patent protection be lost
(1) as the clock strikes mid-night (00:00) on January 10th, 2038? OR
(2) at the close of business (COB, 17:30) on the day of January 10th, 2038? OR
(3) right after 23:59 on January 10th, 2038?

Apparently in some jurisdictions, it is routine practice to subtract a day from the patent term.
Any thoughts and/or comments would be greatly appreciated!  Thanks very much!
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Toot Aps Esroh

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Re: Patent Term - Expiration date and time
« Reply #1 on: 07-12-18 at 10:55 am »

Hi all,

I have been asked the following question and as I am not so sure, I would like to hear your thoughts:

Question:
If an U.S. patent was issued on January 10th, 2018, would the 20 years' patent protection be lost
(1) as the clock strikes mid-night (00:00) on January 10th, 2038? OR
(2) at the close of business (COB, 17:30) on the day of January 10th, 2038? OR
(3) right after 23:59 on January 10th, 2038?
(4) none of the above, because patent term is generally without regard to issue date but rather tied to filing date of the earliest non-provisional to which the patent claims priority.

Apparently in some jurisdictions, it is routine practice to subtract a day from the patent term.
Any thoughts and/or comments would be greatly appreciated!  Thanks very much!


Hi, I added another option to your question set. 

Putting that aside and let us say instead that the patent's effective filing date was on January 10th, 2018, then I think option (3) makes the most sense, but would welcome contradiction from someone who has actual knowledge.

Option (2) probably makes no sense as who cares when COB is?  Option (1) may be correct if the patent is no longer in-force immediately upon the date that it expires, but my general thinking is that instead, the patent is in-force all day on the day that it expires.
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Robert K S

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Re: Patent Term - Expiration date and time
« Reply #2 on: 07-12-18 at 12:00 pm »

Another answer is "How much does it really matter to the overlying questions of when a cease & desist letter can be sent/lawsuit filed in the federal courthouse and how big the damages are going to be?"

Even presuming an infringer commences infringing activity a day early (i.e., a day before there would be no infringement), is the lawsuit going to be worth the day's worth of damages to the plaintiff?  To what extent will the day's worth of damages be provable?

I am not in the pharma field but my understanding is that many generics makers start to ramp up their production of a new generic months before the original drugmaker's patent expiry.
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MYK

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Re: Patent Term - Expiration date and time
« Reply #3 on: 07-12-18 at 02:57 pm »

Just to add, there's also sometimes patent term extension.
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Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

En-trance

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Re: Patent Term - Expiration date and time
« Reply #4 on: 07-13-18 at 03:34 am »



"Toot Aps Esroh" thanks for that, that was a great point, it should have been the effective filing date of January 10th, 2018, since it is the date from which patent term is calculated.

"Robert K S" I have heard that one day could mean A LOT in certain pharma suits when assessing damages. And apparently generics routinely do the 20 years + 1 day just to be safe.
But the motivation for starting this thread is simply to find out an accurate patent term date so that one could confidently put it on an official contract.

"MYK" that's a good point, too! Patent term extension definitely will affect the answer. But here the intention was just to keep things simple. So assuming no patent term adjustment.

Apparently, this issue was brought up and somewhat discussed ten years ago by Dennis Crouch https://patentlyo.com/patent/2008/03/patent-challeng.html
But it appeared that some posted comments recommended option (3), while others insisted option (1) should be followed. And it also seemed that option (1) is followed in all other jurisdictions other than the US?
 
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Robert K S

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Re: Patent Term - Expiration date and time
« Reply #5 on: 07-13-18 at 02:17 pm »

I have heard that one day could mean A LOT in certain pharma suits when assessing damages

I would like to understand how.  Patent damages are generally the cost of a license or, if provable and larger, lost profits.  What would a license for a last day of a patent be worth, particularly if only fabrication activities can be made that day, and, realistically, no sales can be made that day?  In most cases, less than the cost of a patent lawsuit, I should think.  And as for lost profits, how could any plaintiff possibly prove lost profits for one day, and that particular day, the last day in the life of the patent?  Again, the cost of proving this is in most cases going to be more than damages.

I realize you may think this a total digression from your intended query, but my point is that it's not.  The reason this question is not a legally settled one, and does not have a well-known, established answer, is that it hasn't been material in any case to date.  For that reason, I wouldn't specify an exact date of a patent expiry in a contract.  I would just say "the date of the patent expiration as established by 35 U.S.C. 154(a)(2)", and let the point of contention roll to later on down the road if it should ever need to be litigated.
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Toot Aps Esroh

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Re: Patent Term - Expiration date and time
« Reply #6 on: 07-13-18 at 04:50 pm »

Humira's expected daily sales are on the close order of $55,000,000 - that's an average assuming Sat/Sun are the same as any other day.  More per day if sales are primarily M-F.

It's pretty readily accepted that generic entry reduces the brand price by some 30-40%. (ETA: initially, I should have said. Price depression is significantly higher later on)

At the low end, that's $15,000,000 for one day of sales.  Or maybe 30% of their normal sales on that day go to the cheaper guy, whatever. 

Whether you could get experts to reasonably argue lost sales hit immediately on that one solitary day, and how much they were, is a big question of course.  But there may well be a sizable pot of money to play with when you're talking about the true blockbuster category drugs. 
« Last Edit: 07-13-18 at 05:40 pm by Toot Aps Esroh »
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