Non-member submission from ["Tyson, Karin" <Karin.Tyson@USPTO.GOV>]
Ms. Davis-
Your e-mail was directed to me for a reply. As to patent term
extensionsunder 35 USC 156, we haven't issued any extensions for some time,
but willbe granting 35 in the next month or two. FDA made some staffing
changeswhich resulted a delay in the processing of the applications, and
then therewere further delays because when they gave me their final letters,
I was inthe middle of rulemaking for the new patent term adjustment
legislation.
Patent term adjustments under 35 USC 156 will continue to be done by
acertificate placed in the C of C field of a granted patent. We also
publishOfficial Gazette Notices of the patent extension. Database providers
suchas Derwent make this information readily available, but the information
isnot find-able searching the US patent database because Certificates
ofCorrection are not text searchable at this time. The USPTO is making
plansto add this information to the patent text database, but this search
featureis probably years away.
I do maintain an Excel spreadsheet of pending patent term
extensionapplications, you may wish to ask me for it from time to time in
order to bebetter able to predict the term extension. (I would want to
e-mail it.)Another good way to predict a term adjustment is by looking at
the E-FOIApart of the homepage. We put up all of the Notice of Final
Determinationthere.
(http://www.uspto.gov/web/offices/com/sol/foia/comm/pte/pte.htm)
By new legislation, I think you mean the changes to 35 USC 154 which
willprovide for term adjustments due to USPTO delays. I believe that
patentadjustment information, printed on the face of a paten, will be
searchablein the next year or two, but don't see why anyone would do a text
search forthis data except for general historical (how many received a term
extension)purposes. If a patent is printed without correct information on
the face ofthe patent, a C of C will be generated to correct this
information, but asstated above, it will not be part of the patent text
database.
We are planning to add term adjustment information to the Patent
ApplicationInformation Retrieval (PAIR) system. With this system, you would
still needto look at an individual record. The USPTO does not have any
plans tocompile lists of applications granted a term adjustment under the
new A7 154.
Karin Tyson
Senior Legal AdvisorOffice of Patent Legal Administration
-----Original Message-----From: Sara_K_Davis@sbphrd.com
<mailto:Sara_K_Davis@sbphrd.com>[SMTP:Sara_K_Davis@sbphrd.com]
<mailto:[SMTP:Sara_K_Davis@sbphrd.com]>20Sent: Tuesday, April 18, 2000 11:31
AMTo: piug-l@derwent.tecc.co.uk
<mailto:piug-l@derwent.tecc.co.uk>20Subject: Information on US Patent Term
ExtensionsAs far as I can determine, no listings of term extensions of US
patents havebeen provided by the USPTO for some time. The last notice of
these in theUSOfficial Gazette was almost a year ago. The listing of
extended patents ontheUSPTO web site was last updated in August, 1999.How is
information about patent term extensions being provided to thepublic?Must we
rely only on certificates of correction, which are far from idealvehicles
for disseminating this type of information?Does anyone know anything about
this? Considering that the latestlegislationis likely to result in even
more term extensions, it would seem that thiskindof information needs to be
more readily available, not less.Sara Davis, SmithKline Beecham -US
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