Patent Term

35 U.S.C. 154

Contents and term of patent; provisional rights.

(a) IN GENERAL.—

*****

(2) TERM.—Subject to the payment of fees under this title, such

grant shall be for a term beginning on the date on which the patent issues

and 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.

(3) PRIORITY.—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.

*****

(c) CONTINUATION.—

(1) DETERMINATION.—The term of a patent that is in force on or

that results from an application filed before the date that is 6 months

after the date of the enactment of the Uruguay Round Agreements Act shall be

the greater of the 20-year term as provided in subsection (a), or 17 years

from grant, subject to any terminal disclaimers.

(2) REMEDIES.—The remedies of

sections

283

,

284

, and

285

shall not apply to acts which —

(A) were commenced or for which substantial investment

was made before the date that is 6 months after the date of the

enactment of the Uruguay Round Agreements Act; and

(B) became infringing by reason of paragraph (1).

(3) REMUNERATION.—The acts referred to in paragraph (2) may be

continued only upon the payment of an equitable remuneration to the patentee

that is determined in an action brought under

chapter

28

and

chapter 29

(other than

those provisions excluded by paragraph (2)).

*****

For applications filed on or after June 8, 1995, Section 532(a)(1) of the

Uruguay Round Agreements Act (Public Law 103-465, 108 Stat. 4809 (1994)) amended

35 U.S.C

in paragraph (2) may be

continued only upon the payment of an equitable remuneration to the patentee

that is determined in an action brought under

chapter

28

and

chapter 29

(other than

those provisions excluded by paragraph (2)).

*****

For applications filed on or after June 8, 1995, Section 532(a)(1) of the

Uruguay Round Agreements Act (Public Law 103-465, 108 Stat. 4809 (1994)) 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 (the date of entry into force of the 1999 Geneva Act of the Hague

Agreement Concerning the International Registration of Industrial Designs (“Hague

Agreement”) as to the United States) has a term of fifteen years from the date of patent

grant (see Public Law 112-211). See

35 U.S.C. 173

and

MPEP § 1505

. 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. Therefore, the term “design patents” includes patents

issued from design applications filed under

35 U.S.C. 111

and international design

applications filed under

35 U.S.C. 385

. The Patent Law Treaties

Implementation Act of 2012, Public Law 112-211, which implemented the provisions of the

Hague Agreement, amended

35 U.S.C. 154(a)(2)

to delete "section 120, 121, or 365(c)" and to

insert "section 120, 121, 365(c), or 386(c)" and 35 U.S.C

cludes patents

issued from design applications filed under

35 U.S.C. 111

and international design

applications filed under

35 U.S.C. 385

. The Patent Law Treaties

Implementation Act of 2012, Public Law 112-211, which implemented the provisions of the

Hague Agreement, amended

35 U.S.C. 154(a)(2)

to delete "section 120, 121, or 365(c)" and to

insert "section 120, 121, 365(c), or 386(c)" and 35 U.S.C. 154(a)(3) to delete "section

119, 365(a), or 365(b)" and to insert "section 119, 365(a), 365(b), 386(a), or 386(b)."

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. See

35 U.S.C.

154(c)

. A patent granted on an international application filed before

June 8, 1995, and which entered the national stage under

35 U.S.C. 371

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 (discussed

below).

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

,

365(c)

, or

386(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

egardless 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)

,

365(b)

,

386(a)

,

or

386(b)

is not considered in determining the term of a patent.

Accordingly, an application claiming priority under

35 U.S.C. 365(a)

,

365(b)

,

386(a)

, or

386(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 or international design 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.

See

35 U.S.C.

154(a)(3)

.

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

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. Before June 8, 1995,

the terminal disclaimer date was printed on the face of the patent; the date was

determined from the expected expiration date of the earlier issued patent based on a

seventeen year term measured from grant. When

35 U.S.C. 154

was amended such that

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, the terminal

disclaimer date as printed on many patents became incorrect. 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 under

37 CFR

1.323

to correct the information printed on the face of the

patent. See

Bayer AG v. Carlsbad Tech., Inc.,

298 F.3d 1377, 64

USPQ2d 1045 (Fed. Cir. 2002). However, 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. But a patent term extension under

35 U.S.C

f the

patent. See

Bayer AG v. Carlsbad Tech., Inc.,

298 F.3d 1377, 64

USPQ2d 1045 (Fed. Cir. 2002). However, 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. But a patent term extension under

35 U.S.C. 156

may

be applied to a patent that is subject to a terminal disclaimer. See

Merck

& Co. v. Hi-Tech Pharmacal Co.,

482 F.3d 1317, 82 USPQ2d 1203 (Fed.

Cir. 2007). In contrast, patent term adjustment under 35 U.S.C. 154(b) does not extend

the patent term beyond the expiration date specified in the disclaimer. See

35 U.S.C.

154(b)(2)(B)

and

37 CFR 1.703(g)

.

Several decisions related to disclaimers are posted in

the Freedom of Information Act (FOIA) section of the USPTO website (

www.uspto.gov

).

VI.

PATENT TERM EXTENSIONS OR ADJUSTMENTS

See

MPEP

§ 2710

et seq.

for patent term extensions or adjustments for delays within

the USPTO under

35 U.S.C. 154

for utility and plant patents issuing on

applications filed on or after June 8, 1995. Patents that issue from applications filed

before June 8, 1995, are not eligible for patent term extension or patent term

adjustment under

35 U.S.C. 154

.

See

MPEP

§ 2750

et seq.

for patent term extensions available under

35 U.S.C. 156

for

premarket regulatory review. The patent term extension that may be available under

35 U.S.C.

156

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

.

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