Dear Colleagues,

am I wrong to suppose that there could be theoretically still US patents alive, filed before June 8, 1995 but granted (after a long procedure) for 17 years under the old regulation?

Thank you

Guido Moradei

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8 Comments

  1. I guarantee that there are.  Monsanto has 2 of them.  They were in interference for many years and issued a few years ago with 17 years of term.

  2. Guido,

     

    The relevant date for this is June 8 1995.  Any application filed before that date has a 17 year term from the date of issue.

    Here's and old blog post I remembered seeing.  https://patentlyo.com/patent/2014/01/old-patents.html  Apparently in 2014 there were still 450 in this category.

     

    Robert.  

  3. Guido,

     

    In USPATFULL (STN) the following query: AD<19950608 AND patd>20000331 gives 9429 results.  Depending on annuities payment these could still be alive.  Repeating this query in the IFI files will allow you to combine this with a legal status term.

    7 of these documents were granted in 2016.

     

    Gerben

  4. The one example I typically use is an Enbrel patent US8063182, the subject of a New York Times article. The USPAIR information concurs; Filing or 371 (c) Date: 05-19-1995; Issue Date of Patent: 11-22-2011. An article by Asher et al. 2012, gives an expire date of Nov. 2028.

    References: New York Times, Patent for Amgen Drug May Undercut Health Care Plan ANDREW POLLACK, NOV. 23, 2011, http://www.nytimes.com/2011/11/23/business/amgens-new-enbrel-patent-may-undercut-health-care-plan.html.

    Asher Mullard, Nature Reviews Drug Discovery 11, 426-428 (June 2012)

    1. According IFI Claims calculations this is correct. In IFI Claims Direct you can find an expiry date of November 22, 2028 and the status of this patent is active:

      <ifi-integrated-content publication-type="G" accession-number="05578372" document-category="Utility" subject-area="Chemical">
      <ifi-patent-status anticipated-expiration="20281122">
      <ifi-patent-status-description>Active</ifi-patent-status-description>
      </ifi-patent-status>

  5. Thank you to everyone, very interesting, very helpful.

    And probably that happens also in other countries having changed their systems following the TRIPS in the 90's.

    Guido

  6. I think much less likely in other countries - as in every other country I am aware of, the maximum patent term has been filing date plus 20 years (with some minor exceptions for pharma patents)  for many years. Before TRIPs. 

    The US has been quite unique in still allowing 17 years after date of grant for some patents. 

    The other area where the US was unique was allowing interference proceedings. In the rest of world, first to file was the general rule.

    1. Mike, you're right that it is much less likely in other countries due to the late adaptation of the US patent system in both aspects indicated.

      The only other country that I know to have made the change from term defined by grant date to term defined by filing date quite late and that still has living patents where the term is defined by the date of grant is Chile.  In Chile the term used to be 15 years from grant.  This changed on 1-dec-2005 into 20 years from filing.  For patents filed before and still alive on 1-dec-2005 the term is the longer of 20 years from filing or 15 years from grant.  Also in Chile, procedures can be lengthened because Chile has pre-grant opposition proceedings which delay the grant date and thus, for applications filed before 1-dec-2005, also delayed the starting date of the 15 years period.

      Please take this into account when doing business in, or executing a clearance for Chile.