Department of Commerce Patent and Trademark Office Proposed Determination of New Expiration Dates of Certain Patents Agency: Patent and Trademark Office, Commerce Action: Request for Comments Summary: The Patent and Trademark Office (PTO) intends to determine and publish the new expiration dates of patents that, 1) are in force on June 8, 1995, 2) are entitled to a term of 20 years from filing, and 3) have received a term extension under either section 155 or 156 of title 35, United States Code. The PTO seeks written comments on its intended course of action. Dates: Written comments must be submitted on or before April 26, 1995. Addresses: Address written comments to the Commissioner of Patents and Trademarks, Washington, D.C. 20231 Attention: H. Dieter Hoinkes, Office of Legislative and International Affairs, Crystal Park 2, Suite 902, or by facsimile to (703) 305-8885. For Further Information Contact: H. Dieter Hoinkes by telephone at (703) 305-9300, by facsimile at (703) 305-8885, or by mail marked to his attention addressed to the Commissioner of Patents and Trademarks, Box 4, Washington, D.C. 20231. Supplementary Information: Under section 156 of title 35, United States Code, patent term extensions are issued for eligible patents from the original expiration date of the patent. Since this provision was enacted in 1984, the PTO has issued 195 certificates of patent term extension in accordance with section 156. Under the Uruguay Round Agreements Act ("URAA"), Pub. L. 103-465, patents in force on June 8, 1995, are entitled to a patent term of 17 years from grant or 20 years from their earliest filing data, whichever is greater (see 35 U.S.C. 154 (c)(1)). It is estimated that 94 patents whose terms were extended under section 156 are entitled to such a longer patent term. On February 16, 1995, the PTO held a public hearing to elicit comments on what action it should take regarding patents that are entitled to a longer patent term under the URAA and that had previously been extended under section 156. (See 60 Fed. Reg. 3398 (Jan. 17, 1995)). After having considered all the comments, both written and oral, the PTO intends to publish the new expiration date of all patents that fall into the category mentioned above. The determination of the new expiration dates will be based on the following three considerations: 1) A patent that would have expired under the original 17-year patent term before June 8, 1995, but that has received a patent term extension for a period beyond June 8, 1995, is a patent "in force" on June 8, 1995, even though the rights derived from that patent are circumscribed by section 156(b) of title 35. 2) The "original expiration date of the patent" referred to in section 156(a) of title 35 is the date on which the patent would have expired if it had not been extended under section 156 to expire at a later date. Therefore, the "original expiration date" of the patents under consideration is the date on which the 20-year term from filing terminates. 3) The extension already issued on the basis of the 17-year term will be added to the 20-year term, subject to the limitation imposed by section 156(c)(3) of title 35. That provision limits the period remaining in the term of an extended patent to fourteen years counted from the date on which the product under review received approval for commercial marketing by the relevant regulatory authority. In addition, it should be noted that under the provisions of section 155 of title 35, 33 patents were extended, each for a period of five years, ten months and 17 days. Of the 32 patents in force on June 8, 1995, 20 are entitled to the longer term of 20 years from their relevant filing date. Their new expiration date, taking into account the term of extension provided by 35 U.S.C. 155, is also intended to be published. Comments are invited on the course of action the PTO intends to undertake with respect to the new expiration dates of patents in the category discussed above. In issuing its final determination, the PTO will respond to significant comments received. Mar. 20, 1995 BRUCE A. LEHMAN Assistant Secretary of Commerce and Commissioner of Patents and Trademarks