Without reading the actual Terminal Disclaimer document from the file history
one cannot be sure if the '780 patent expires simultaneously with patent A, one
of the later patents, or if several expire together.
Seems to me that the USPTO could easily specify which patent(s) were named in
the Terminal Disclaimer document, especially since the patent(s) almost
certainly will be named on the front page in the Related U.S. Application field;
although, there will be rare cases where double patenting occurs with
'unrelated' applications.
Well, at least I'm not in pharmaceuticals where I must time the launch of a
generic with the expiry of a patent with a terminal disclaimer naming a patent
which possibly received a term extension!
R.B. Luke
ChemFirst Inc.
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To: piug-l@derwent.tecc.co.uk
cc: (bcc: RB Luke/FCC/First Mississippi Corporation)
Subject: Terminal Disclaimers and USPTO Data
I haven't yet encountered the problem Edlyn mentions, where the disclaimer date
can't be determined from the face of the patent. But if you're using the USPTO
site as an information source, be aware that terminal disclaimer information, or
even the fact of its existence, does NOT appear in the text-mode data (full text
or otherwise) in patents retrieved from this database. The front page must be
viewed as an image to determine whether or not there is a terminal disclaimer.
I'm not sure what the purpose is of omitting this important data from the text
version, but if the expiry date of a patent is important, be sure to look at a
front page image.
Sara Davis, SmithKline Beecham
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To: piug-l@derwent.tecc.co.uk
cc: (bcc: RB Luke/FCC/First Mississippi Corporation)
Subject: Terminal disclaimer information on US patents
If you've looked at many recent US patents, you may have noticed that some of
them are issuing with the usual asterisk next to the issue date, and a
corresponding note that says "This patent is subject to a terminal disclaimer."
Before the 1995 law changes, terminal disclaimers had an expiration date
corresponding to the expiration date of an earlier patent whose coverage would
have been extended beyone 17 years if the second patent didn't expire at the
same time. After the law changed, it was discovered that those dates might not
match the actual expiration date of the earlier patent, and terminal disclaimers
began to show the patent number of the earlier patent and state that the term
after the expiration of that patent had been disclaimed. You could calculate
the disclaimer date by checking the expiration date of the earlier patent. But
how do you calculate the expiration date of a patent that tells you only that a
terminal disclaimer exists?
I asked IFI, which reports terminal disclaimer dates in the CLAIMS databases,
how they were handling these and if the USPTO was making the terminal disclaimer
information available in some form. They checked with the USPTO, and came back
with a very disappointing answer: Providing terminal disclaimer dates (or
patent numbers) was "too complicated" for the PTO.
This seems to leave us with only one option if we want to know the termination
date of one of these patents - ordering the file wrapper from the PTO. This
hardly seems possible.
Has anyone else dealt with this problem? Is anyone working to get the PTO to
publish the terminal disclaimer information?
Edlyn Simmons