| Allowance, Patent Term Adjustment or Extension |
Referenced Items (292, 293, 294, 295, 296, 297, 298, 299, 300, 301, 302, 303, 304, 305, 306, 307, 308) |
(294) Revision of Certificate of
Extension Language Regarding Original Expiration Date
35 U.S.C. § 156 provides for the extension of the term of a patent which
claims a product, a method of using a product, or a method of manufacturing
a product where such product (defined in 35 U.S.C. § 156(f)) was subject to
a pre-marketing regulatory review period (defined in 35 U. S.C. § 156(g)),
upon application by the patent owner.
Currently, the language on a Certificate of Extension states, in part:
Since it appears that the requirements of the law have been met, this
certificate extends the term of the patent for the period of
(94) [number of days]
from MM DD, YYYY, the original expiration date of the patent, subject to
the payment of maintenance fees as provided by law, with all rights
pertaining thereto as provided by 35 U.S.C. § 156.
The USPTO is changing this language on the Certificate of Extension to
read as follows:
According to United States Patent and Trademark Office records, the
original expiration date of the patent as of the date of issuance of this
certificate is MM DD, YYYY. Because it appears that the requirements of the
law have been met, this certificate extends the term of the patent for the
period of
(94) [number of days],
subject to the payment of maintenance fees as provided by law, with all
rights pertaining thereto as provided by 35 U.S.C. § 156.
The resolution of double patenting issues during the patent application
examination process commonly results in the submission of a terminal
disclaimer pursuant to 35 U.S.C. § 253 and 37 C.F.R. § 1.321. When a
Certificate of Extension is granted in such a case, the original expiration
date reflects the terminal disclaimer submitted during the patent
application examination process.
The Office is clarifying language in its Certificate of Extension to
address situations where issues of double patenting arise after the patent
issues (e.g., during patent enforcement proceedings). The original
expiration date listed on the granted Certificate of Extension does not
take into account a later filed terminal disclaimer. The later filed
terminal disclaimer may result in an earlier expiration date. Thus, the
Office is changing the Certificate of Extension language to clarify that it
reflects the original expiration date according to the records of the
Office at the time the Certificate of Extension is granted.
Implementation of changes to the Certificate of Extension language shall
become effective on the date of this notice.
Any inquiry regarding this notice may be directed to Mary C. Till,
Senior Legal Advisor, Office of Patent Legal Administration, Office of the
Deputy Commissioner for Patent Examination Policy, by telephone at
(571) 272-7755 or (571) 272-7701, or by electronic mail at
Patent.Practice@uspto.gov.
June 6, 2017 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1440 OG 123]
Top of Notices (294) December 27, 2022