Several questions regarding the PTO determination of patent term extensions
Several questions regarding the PTO determination of patent term extensions:
1. Does a registered practitioner have an ethical duty to disclose to the
Office an error in the Notice of Allowance and Issue Fee Due (PTOL-85),
wherein the term adjustment indicated is a longer period than expected?
2. Does a practition have an ethical duty to disclose to the Office an error in
the fees requested or paid?
3. Would the answer to number 1 change if the additional time was very short?
4. If the answer to question 1 is yes, are you aware of any other agencies that
require monitoring by an outside attorney?
5. If the answer to question 1 is yes, are attorneys under a similar duty to
inform the agency that an examiner has made a legal or factual mistake on an
application and granted a claim that is broader than it should be? Is there a
6. Does it make any difference whether the practitioner returns in
the PTOL-85B (issue fee transmittal form) with the incorrect patent term
adjustment information pre-printed on the form, or sends in an attorney
generated issue fee transmittal without any indication of the appropriate
patent term adjustment information?
- Scott Chambers
- Arnold & Porter
- Telephone: (202) 942-5000
- 555 Twelfth Street, NW
- Fax: (202) 942-5999
- Washington, DC 20004-1202