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…
Read MoreHow do terminal disclaimers affect patent expiration dates?
Terminal disclaimers can affect the expiration date of a patent by limiting its term to that of an earlier-issued patent. The MPEP explains, 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…
Read MoreWhy is a terminal disclaimer required for petitions to excuse unintentional delay in international design applications?
A terminal disclaimer is required for petitions to excuse unintentional delay in international design applications to prevent the applicant from unfairly extending the patent term due to the delay. This requirement is specified in 37 CFR 1.1051(d). The MPEP explains: “Pursuant to 37 CFR 1.1051(d), any petition under 37 CFR 1.1051(a) must be accompanied by…
Read MoreCan a terminal disclaimer overcome a pre-AIA 35 U.S.C. 102(e) rejection?
No, a terminal disclaimer cannot overcome a pre-AIA 35 U.S.C. 102(e) rejection. This is explicitly stated in the MPEP: “Note that a terminal disclaimer does not overcome a pre‑AIA 35 U.S.C. 102(e) rejection. See, e.g., In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).” A terminal disclaimer is typically used to overcome…
Read MoreHow does a terminal disclaimer affect patent term adjustment eligibility?
A terminal disclaimer can significantly affect patent term adjustment eligibility. According to MPEP 2751: “Patents subject to a terminal disclaimer are not eligible for patent term adjustment under 35 U.S.C. 154(b).“ This means that if a patent is subject to a terminal disclaimer, it is not eligible for any patent term adjustment, regardless of any…
Read MoreHow does a terminal disclaimer affect patent term adjustment?
A terminal disclaimer can limit the effect of patent term adjustment (PTA). According to MPEP 2731: “37 CFR 1.703(g) indicates that no patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under 37 CFR 1.702 and 1.703 beyond the expiration date specified in the disclaimer (35 U.S.C. 154(b)(2)(B)).“ This…
Read MoreHow does a terminal disclaimer affect maintenance fee payments?
A terminal disclaimer can affect the term of a patent, but it does not change the maintenance fee payment requirements. According to MPEP 2520: “The term of a patent might be shortened, e.g., by a terminal disclaimer. If a patent will expire part way between the due dates set in 35 U.S.C. 41(b), or between…
Read MoreAre there any limitations on patent term extensions for applications filed between June 8, 1995, and May 28, 2000?
Yes, there are several limitations on patent term extensions for applications filed between June 8, 1995, and May 28, 2000. According to MPEP 2720: The total duration of all extensions cannot exceed 5 years. Extensions for successful appeals are limited to patents not subject to a terminal disclaimer. The period of extension will be reduced…
Read MoreWhat are the specific eligibility requirements for patent term adjustment?
The specific eligibility requirements for patent term adjustment are outlined in MPEP 2751. These include: The patent must be an original utility or plant patent issued on or after May 29, 2000. The application for the patent must have been filed on or after May 29, 2000. The patent must not be subject to a…
Read MoreWhat should I do if I believe the Patent Term Adjustment on my patent is incorrect?
If you believe the Patent Term Adjustment (PTA) indicated on your patent is incorrect, you have several options depending on whether you think it’s too long or too short: If you think the PTA is too short: File a request for reconsideration using the procedures set forth in 37 CFR 1.705(b). This is the official…
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