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2701    Patent Term  

MPEP SECTION SUMMARY For applications filed on or after June 8, 1995 the Uruguay Round Agreements Act amended 35 U.S.C. 154 to provide that the term of a patent (other than a design patent) begins on the date the patent issues and ends on the date that is twenty 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 35 U.S.C. 120, 121, or 365(c), twenty years from the filing date of the earliest of such application(s). This patent term provision is referred to as the “twenty-year term.” Design patents have a term of fourteen years from the date of patent grant, except for any design patent issued from applications filed on or after May 13, 2015 has a term of fifteen years from the date of patent grant.  Under the Hague Agreement, qualified applicants may apply for design protection in the Contracting Parties to the Hague Agreement by filing a single, standardized international design application in a single language. This section provides further coverage on the terms of different application types including; continuing and international applications. It also discusses the impact of foreign priority, domestic benefits, and terminal disclaimers on patent terms.

 

All patents (other than design patents) that were in force on June 8, 1995, or that issued on an application that was filed before June 8, 1995, have a term that is the greater of the “twenty-year term” or seventeen years from the patent grant.

A patent granted on an international application filed before June 8, 1995, and which entered the national stage before, on or after June 8, 1995, will have a term that is the greater of seventeen years from the date of grant or twenty years from the international filing date or any earlier filing date relied upon under 35 U.S.C. 120, 121 or 365(c).

The terms of these patents are subject to reduction by any applicable terminal disclaimers

I.   CONTINUING APPLICATIONS

A patent granted on a continuation, divisional, or continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c), regardless of whether the application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) was filed prior to June 8, 1995.

II.   INTERNATIONAL APPLICATIONS

A patent granted on an international application filed on or after June 8, 1995 and which enters the national stage under 35 U.S.C. 371 will have a term which ends twenty years from the filing date of the international application.

• A continuation or a continuation-in-part application claiming benefit under 35 U.S.C. 365(c) of an international application filed under 35 U.S.C. 363 designating the United States will have a term which ends twenty years from the filing date of the parent international application.

III.   FOREIGN PRIORITY

Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), or 365(b) is not considered in determining the term of a patent.

• Accordingly, an application claiming priority under 35 U.S.C. 365(a) or 365(b) has a term which ends twenty years from the filing date of the application in the United States and not the prior international application.

IV.   DOMESTIC BENEFIT UNDER 35 U.S.C. 119(e)

Domestic benefit under 35 U.S.C. 119(e) to one or more U.S. provisional applications is not considered in the calculation of the twenty-year term.

V.   EXPIRATION DATE OF PATENTS WITH TERMINAL DISCLAIMERS

To determine the “original expiration date” of a patent subject to a terminal disclaimer, it is generally necessary to examine the language of the terminal disclaimer in the patent file history.

• If the disclaimer disclaims the terminal portion of the term of the patent which would extend beyond the expiration date of an earlier issued patent, then the expiration date of the earlier issued patent determines the expiration date of the patent subject to the terminal disclaimer.

If the terminal disclaimer of record in the patent file disclaims the terminal portion of the patent subsequent to the full statutory term of a referenced patent (without identifying a specific date), then the date printed on the face of the patent is incorrect when the full statutory term of the referenced patent is changed as a result of 35 U.S.C. 154(c).

• That is, the referenced patent’s “twenty year term” is longer than the seventeen year term.
• In such a case, a patentee may request a Certificate of Correction to correct the information printed on the face of the patent.

If the terminal disclaimer of record in the patent file disclaims the terminal portion of the patent subsequent to a specific date, without reference to the full statutory term of a referenced patent, then the expiration date is the date specified.

VI.   PATENT TERM EXTENSIONS OR ADJUSTMENTS

Patents that issue from applications filed before June 8, 1995, are not eligible for patent term extension or patent term adjustment.

The patent term extension that may be available for premarket regulatory review is separate from and will be added to any extension that may be available under former and current 35 U.S.C. 154.

While patents that issue from applications filed before June 8, 1995, are not eligible for term adjustment under 35 U.S.C. 154, such patents may be extended under 35 U.S.C. 156.

 

» 2710 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154