Can a terminally disclaimed patent be eligible for patent term extension?
Yes, a patent may be extended under 35 U.S.C. 156, even if it has been terminally disclaimed. The MPEP states:
“A patent may be extended under 35 U.S.C. 156, even though it has been terminally disclaimed.”
This is because a patent term extension under 35 U.S.C. 156 is a limited extension of patent rights associated with the approved product that is attached to the original term of the patent. Unlike other patent term adjustments, there is no exclusion in 35 U.S.C. 156 for terminally disclaimed patents.
The case of Merck & Co., Inc. v. Hi-Tech Pharmacal, Co., Inc., 482 F.3d 1317 (Fed. Cir. 2007) confirms that patents may receive a patent term extension under 35 U.S.C. 156 beyond an expiration date set by a terminal disclaimer.
To learn more:
Topics:
Adjustments,
And Extensions,
MPEP 2700 - Patent Terms,
MPEP 2751 - Eligibility Requirements,
Patent Law,
Patent Procedure