RE: Question Regarding US Expiry Dates/Patent Terms

From: Rick Neifeld <rneifeld_at_neifeld.com>
Date: Mon, 21 Jun 2004 09:59:06 -0400

"Will it have a 20 year term from the date of filing of the priority
document (i.e. Dec'1983)" - The answer to that question is ambiguous,
since, "priority document" may mean a PCT application or earlier U.S.
application priority to which is claimed under 35 USC 120.

Also, keep in mind that there is a complication to the Gatt rule for
applications that were pending on June 8, 1995 so that the 20 year rule
may not apply in those cases.

Also, keep in mind that all rules under all three sets of term laws =
(pre
Gatt/Trips, Gatt/Trips, and AIPA) are subject to terminal disclaimers.

Also, keep in mind that any term extension, whether via private law,
GATT/Trips, or AIPA, are also subject to terminal disclaimers.

Also, keep in mind that "term" to the extent it means a valid
presumptively enforceable patent, is subject to timely payment of
maintenance fees (for those U.S. patents filed after the maintenance
fees rules were enacted).

thanks, RICK

Rick Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
2001 Jefferson Davis Highway, Suite 1001
Arlington, VA 22202
Tel: 703-415-0012
Fax: 703-415-0013
URL: www.Neifeld.com





-----Original Message-----
From: Andrew Berks [mailto:andyberks_at_andy-deloria.org]
Sent: Monday, June 21, 2004 8:20 AM
To: piug-l_at_derwent.co.uk
Subject: Re: Question Regarding US Expiry Dates/Patent Terms


The answer to both of these questions is that an
application filed after JUne 8, 1995 is subject to the 20
year rule from the date of the earliest application.
 Thus, in Kaushik's case, the expiry would be 2003 (1983 +
20 years), and in Rodney's case the patent would expire in
2013 (1993 + 20 years). For PCT's, the date of entry into
the national phase does not count as an application date.
 If Rodney's June 9, 1995 date was the entry into the
national phase only, that patent would be entitled to the
17 rule, so it would expire in 2015 (1998+17) which is
longer than the 20 year expiry from the date of the PCT
filing.

Andy Berks
Ivax Corp.

>>>
kaushik.banerji_at_zyduscadila.com
Sent by: <andyberks_at_andy-deloria.org> (Andrew Berks)
06/21/2004 01:30 AM
To
andrew_berks_at_ivax.com
cc

Subject
Re: Question Regarding US Expiry Dates/Patent Terms
        

        



Dear friends

I have a similar query to what Rodney has posted so I
thought I would just add on my query to that of Rodney.
What would be the expiry date of a patent which has a US
priority of Dec 1983, but has a series of CIPs filed
claiming priority from the first application, some of the
CIPs being subsequently abandoned one or two of them being
granted patents, the last of the CIP being filed on
October 1995. What will be the expiry date of the
application filed on October 15, 1995 which was granted
in 2000. Will it have a 20 year term from the date of
filing of the priority document (i.e. Dec'1983), subject
to extensions if any or it will have a 17 year term from
the date of grant or otherwise.
I am trying to understand some of these complexities of US
& European laws basically by going through the official
website but I feel I need to refer to some good books or
guides on Patent laws in these areas. Can somebody pl.
let me know some good books/manual/guides with some
emphasis on Biotechnology.


Thanking you in advance
Yours sincerely
Kaushik Banerjee
IPM Dept.,
Zydus Research Centre, Ahmedabad
India





"Rodney Cruise \(IP Menu\)" <rodney.cruise_at_ipmenu.com>
Sent by: owner-piug-l_at_derwent.co.uk
21/06/2004 06:51 AM

Please respond to
<rodney.cruise_at_ipmenu.com>
        
To
<PIUG-L_at_derwent.co.uk>
cc

Subject
Question Regarding US Expiry Dates/Patent Terms
        
        

        



Dear PIUG members
   
I have a question about expiry dates for US patents that
result from PCT applications.

If an application was filed in the US on 9 June 1995 which
was based on a PCT application filed on 11 October 1993
how would the final expiry date be calculated. The date
of issue is Feb 1998.
   
That is,
(a) is the US application considered as being filed BEFORE
8 June 1995, and therefore subject to the 17 years from
issue date OR 20 years from filing date (whichever is
longer); OR
   
(b) is the US application considered as being filed AFTER
8 June 1995, and therefore subject to the 20 years from
filing date rule.
   
I would appreciate any comments from our friends in the
US.
   
Regards
Rodney Cruise.
IP Organisers Pty Ltd
Phillips Ormonde & Fitzpatrick
rodney.cruise_at_ipmenu.com



Received on Mon Jun 21 2004 - 16:56:55

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