United States Patent and Trademark Office

An Agency of the Department of Commerce

Skip over navigation

Home Help Site Index Contact Us

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

difference?

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
Scott_Chambers@aporter.com
Arnold & Porter
Telephone: (202) 942-5000
555 Twelfth Street, NW
Fax: (202) 942-5999
Washington, DC 20004-1202
http://www.arnoldporter.com
US Department of Commerce
USA.gov