Term of patent in the United States

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In the United States, under current patent law, the term of patent is either 20 years from the earliest claimed filing date or 17 years from the issue date, depending on the filing date and the issue date (provided that the maintenance fees are paid in due time):

  • For applications that were pending on and for patents that were still in force on June 8, 1995, the patent term is either 17 years from the issue date or 20 years from the earliest claimed filing date, the longer term applying.
  • For applications filed on or after June 8, 1995, the patent term is 20 years from the earliest claimed filing date.

The patent term in the United States changed in 1995 to bring the US patent law in conformity with the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). As a side effect, US submarine patents are not possible anymore, since the patent term now depends on the filing date, not the issue date, and further since the publication of patent applications now generally occurs 18 months after filing.

In practice, the determination of the term of a US patent involves further parameters, such as potential extension, i.e. the "patent term adjustment rule" since the American Inventors Protection Act (AIPA) was enacted on November 29, 1999. The patent term may also be reduced by any disclaimer (called a "terminal disclaimer") to the patent term.

The original patent term under the 1790 Patent Act was "not exceeding fourteen years." [1] The 1836 Patent Act (5 Stat. 117, 119, 5) provided (in addition to the fourteen year term) an extension "for the term of seven years from and after the expiration of the first term" in certain circumstances [2]. In 1861 the seven year extension was eliminated and the term changed to seventeen years (12 Stat. 246, 249, 16). The signing of the 1994 Uruguay Round Agreements Act [3] then changed the patent term from seventeen years from the date of issue to the current twenty years from the earliest filing date.

Contents

[edit] Legal basis

35 U.S.C. sec 154 (a)(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, or 365(c) of this title, from the date on which the earliest such application was filed. [Note: International priority dates shall not be used to determining this term.]

35 U.S.C. sec 154 (b) basically provides that, if the USPTO fails to examine a patent application in time, the patent term may enjoy an extension.

35 U.S.C. sec 154 (c)(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 [Note: June 8, 1995] shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any terminal disclaimers.

On the other hand, if a patent application is obvious in light of one of the applicant's earlier application, the applicant may be required by the USPTO to disclaim a part of your term. For example, an applicant's patent A terminates on December 24, 2020. The applicant filed another patent application two years later. Under normal condition, the applicant expects patent B to last until December 24, 2022. However, it is obvious in light of patent A. So the USPTO will ask the applicant to disclaim the part of the term after December 24, 2020.

To a reexamined patent, the term lasts from the date of reissue to the end date of the earlier patent.

Example: A patent No. 6,xxx,xxx (filing: Jan 1, 2000; issue: Jan 1, 2002; end: Jan 1, 2020) is being challenged by the defendant in the USPTO. The USPTO issued a more restricted patent RE2x,xxx (filing: Jan 1, 2003; issue: Jan 1, 2004). The patent is enforceable from Jan 1, 2004 and lasts until Jan 1, 2020.

A medical patent may obtain an extension if extra child-related research are performed.

[edit] Terminal disclaimer

The terminal disclaimer is not always carved in stone. After the Uruguay Round Agreements Act of 1994 (URAA), some patents with terminal disclaimers are eligible to a term extension because their referenced patents received a term extension because of the URAA. This has been discussed in the Manual of Patent Examining Procedure:

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. 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. 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. Several decisions related to disclaimers are posted in the Freedom of Information Act (FOIA) section of the USPTO Internet site (www.uspto.gov). [4]

However, a terminal disclaimer does not negate Patent Term Extension that has been granted under 35 U.S.C. 156. <King Pharma v. Teva, 78 USPQ2d 1237 (D.N.J. 2006)> <http://lawlibrary.rutgers.edu/fed/html/ca05-3855-1.html> In a pharmaceutical patent dispute, Teva argued that Wyeth’s patent on zaleplon drug products (Sonata) had expired because of a terminal disclaimer. Wyeth (and its exclusive licensee King) argued that patent’s term was ongoing because of a Patent Term Extension due to FDA regulatory review delay. Under 35 U.S.C. 156(a), the term of a patent "shall be extended" after a series of provisions are satisfied. The district court found the language of the statute unambiguous and gives the court "no discretion." Thus, if the enumerated conditions are satisfied, the patentee is entitled to a term extension calculated pursuant to Section 156. Teva’s motion to dismiss was consequently denied because "a terminally disclaimed patent is eligible for extension under [Section] 156." The case is interesting because the patentee in the first instance had expressly disclaimed term subsequent to 2003 to get the patent granted. However, the holding of this case does not apply to Patent Term Adjustment granted under 35 U.S.C. 154. Such term adjustments will be subject to any terminal disclaimer that has been filed. See 35 U.S.C. 154(b)(2)(B)("No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.").

[edit] Calculation with a spreadsheet

You can calculate multiple patents' terms automatically using a spreadsheet, such as Microsoft Excel.

Paste this formula into the cell G2 (no space and linebreak, please):

=MIN(E2,
IF(C2>DATE(1995,6,7),DATE(YEAR(MIN(B2,C2))+20,MONTH(MIN(B2,C2)),DAY(MIN(B2,C2))),
IF(D2<DATE(1978,6,8),DATE(YEAR(D2)+17,MONTH(D2),DAY(D2)),
MAX(
DATE(YEAR(D2)+17,MONTH(D2),DAY(D2)),
DATE(YEAR(MIN(B2,C2))+20,MONTH(MIN(B2,C2)),DAY(MIN(B2,C2)))))))+F2

Then fill up Column G with this formula. You'll get:

  A B C D E F G
1 Patent_Number Date_Earliest_Filed
(M/D/YYYY)		 Date_Filed
(M/D/YYYY)		 Date_Issued
(M/D/YYYY)		 Date_Disclaimed
(M/D/YYYY)		 Term_Adjustment
(Number of days)		 Date_Expired
(M/D/YYYY)
2 U.S. Patent 3,878,965    5/13/1974 4/22/1975     4/22/1992
3 U.S. Patent 4,953,192  4/14/1986 9/18/1989 8/28/1990 9/20/2005   9/20/2005
4 U.S. Patent 4,998,580  10/2/1985 1/7/1988 3/12/1991     3/12/2008
5 U.S. Patent 5,260,097  9/22/1989 10/21/1992 11/9/1993     11/9/2010
6 U.S. Patent 5,335,566    7/6/1992 8/9/1994 12/28/2010   12/28/2010
7 U.S. Patent 5,452,159  11/10/1988 5/28/1993 9/19/1995 8/18/2009   8/18/2009
8 U.S. Patent 5,452,231  10/5/1988 5/17/1994 9/19/1995 7/30/2008   7/30/2008
9 U.S. Patent 5,476,774  8/21/1989 3/9/1993 12/19/1995 6/15/2010   6/15/2010
10 U.S. Patent 6,570,814  4/18/1990 6/28/2001 5/27/2003     4/18/2010
11 U.S. Patent 6,744,606  8/13/2001 8/13/2002 6/1/2004     8/13/2021
  • Note 1: As to reissued patents, the filing and issue dates shall be the original patent's dates.
  • Note 2: A patent's earliest effective filing date is buried in the "Parent Case Text" section. You may need to study this section in full carefully to determine which date is the earliest.
  • Note 3: To obtain a pre-1976 patent's earliest effective filing date, you may check the Delphion patent database.
  • Note 4: The duration of a patent's term extension or adjustment is, if available, usually placed between the Assignee and the Application Number.

[edit] External links

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