Proposed Determination of New Expiration Dates of Certain Patents

DEPARTMENT OF COMMERCE

Patent and Trademark Office

Proposed Determination of New Expiration Dates of Certain Patents

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The Patent and Trademark Office (PTO) intends to determine and

publish the new expiration dates of patents that, (1) are in force on

June 8, 1995, (2) are entitled to a term of 20 years from filing, and

(3) have received a term extension under either section 155 or 156 of

title 35, United States Code. The PTO seeks written comments on its

intended course of action.

DATES: Written comments must be submitted on or before April 26, 1995.

[[Page 15749]] ADDRESSES: Address written comments to the Commissioner

of Patents and Trademarks, Washington, DC 20231, Attention: H. Dieter

Hoinkes, Office of Legislative and International Affairs, Crystal Park

2, Suite 902, or by facsimile to (703) 305-8885.

FOR FURTHER INFORMATION CONTACT:

H. Dieter Hoinkes by telephone at (703) 305-9300, by facsimile at (703)

305-8885, or by mail marked to his attention addressed to the

Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231.

SUPPLEMENTARY INFORMATION: Under section 156 of title 35, United States

Code, patent term extensions are issued for eligible patents from the

original expiration date of the patent. Since this provision was

enacted in 1984, the PTO has issued 195 certificates of patent term

extension in accordance with section 156. Under the Uruguay Round

Agreements Act (``URAA''), Public Law 103-465, patents in force on June

8, 1995, are entitled to a patent term of 17 years from grant or 20

years from their earliest filing date, whichever is greater (see 35

U.S.C. 154(c)(1)). It is estimated that 94 patents whose terms were

extended under section 156 are entitled to such a longer patent term.

On February 16, 1995, the PTO held a public hearing to elicit

comments on what action it should take regarding patents that are

entitled to a longer patent term under the URAA and that had previously

been extended under section 156. (See 60 Fed. Reg. 3398 (Jan. 17,

1995)). After having considered all the comments, both written and

oral, the PTO intends to publish the new expiration date of all patents

that fall into the category mentioned above. The determination of the

new expiration dates will be based on the following three

considerations:

(1) A patent that would have expired under the original 17-year

patent term before June 8, 1995, but that has received a patent term

extension for a period beyond June 8, 1995, is a patent ``in force'' on

June 8, 1995, even though the rights derived from that patent are

circumscribed by section 156(b) of title 35.

(2) The ``original expiration date of the patent'' referred to in

section 156(a) of title 35 is the date on which the patent would have

expired if it had not been extended under section 156 to expire at a

later date. Therefore, the ``original expiration date'' of the patents

under consideration is the date on which the 20-year term from filing

terminates.

(3) The extension already issued on the basis of the 17-year term

will be added to the 20-year term, subject to the limitation imposed by

section 156(c)(3) of title 35. That provision limits the period

remaining in the term of an extended patent to fourteen years counted

from the date on which the product under review received approval for

commercial marketing by the relevant regulatory authority.

In addition, it should be noted that under the provisions of

section 155 of title 35, 33 patents were extended, each for a period of

five years, ten months and 17 days. Of the 32 patents in force on June

8, 1995, 20 are entitled to the longer term of 20 years from their

relevant filing date. Their new expiration date, taking into account

the term of extension provided by 35 U.S.C. 155, is also intended to be

published.

Comments are invited on the course of action the PTO intends to

undertake with respect to the new expiration dates of patents in the

category discussed above. In issuing its final determination, the PTO

will respond to significant comments received.

Dated: March 20, 1995.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 95-7388 Filed 3-24-95; 8:45 am]

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