Patents Expire 20 Years From First Non-Provisional Asserted Priority Application, Plus Any Term Extension: Patents filed after June 8, 1995, expire 20 years after earliest non-provisional U.S. or PCT priority application they cite. 35 U.S.C. § 154(a)(2) (“ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c), from the date on which the earliest such application was filed.”); 35 U.S.C. § 154(a)(3) (“Priority under section 119, 365(a), 365(b), 386(a), or 386(b) shall not be taken into account in determining the term of a patent.”) [Sec. 119(e) governs priority to provisional application.]
Multiple Grounds For Extension Of Patent Term: Patent Office may extend term under Sec. 154(b) or 156 (Hatch-Waxman Act). May be extended for time spent on appeal, or delayed response by PTO, a regulatory review period, etc. SeeActelion (Fed. Cir. 02/06/18) (aff’g district court approval of PTO extension calculation under 154(b): provisions “only restore ‘undue delays in patent examination caused by the PTO’ as provided by Congress”). SeeSupernus (Fed. Cir. 01/23/19) (rev’g PTO; “USPTO may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent.”)
Sec. 156(b)(2) Extension Is Limited To Methods Of Using Approved Product As Defined In Sec. 156(f): Biogen (Fed. Cir. 04/21/20) (aff’g non-infringement: § 156(b)(2) Hatch-Waxman Act extension does not apply because de-esterified form of active ingredient not same product under § 156(f) (defining “product” as “the active ingredient of . . . a new drug . . . including any salt or ester of the active ingredient”)).
Double Patenting Doctrine Does Not Invalidate Otherwise Proper Patent Term Extension: Novartis AG (Ezra) (Fed. Cir. 12/07/18) (aff’g that obviousness double patenting does not invalidate a patent term extension where patent owner had two patents covering product/method subject to regulatory review and, as permitted, selected one for a five year extension of term, so expires 22 years after issue date, and after the second, later-filed patent).
Patent Defenses is a research tool maintained by Klarquist since 2004. Visit klarquist.com to learn more about us.
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