In the wake of the Federal Circuit’s Forest Group decision and with Solo Cup being briefed, I have found myself in collegial discussions constantly encountering the position that it is a simple matter to determine a patent’s expiration date quickly, and that “any person with basic knowledge of the patent system” can do so (Brinkema, J.) There’s nothing like a nice counterexample…
Yesterday’s challenge was well-received, with several entries and a variety of responses (guesses?). Here’s how I went about the determination, with notes along the way:
1) The filing date is after June 1995, so term will be 20 years from earliest claimed priority date.
2) Earliest claimed priority date for this patent is not listed on face, but rather is found in the first paragraph of the specification: January 10, 1990. This is a proper priority claim, per 37 CFR 1.78(a)(2)(i). See MPEP 201.11 III(A). With no more information, it appears the patent expired January 11, 2010 – a week before it issued (based on this discussion at PatentlyO, I am working on the assumption that a patent is still in force until the day after its anniversary date).
a. Red Herrings: in the file wrapper, this January 10, 1990 reference is not found in the Application Data Sheet (listing an August 1992 reference) or the Declaration (listing a June 1990 reference). But the listing in the specification is sufficient, per MPEP.
3) Looking at the image of the first page (or the file wrapper), however, we see there is term extension of 162 days. This fact is not apparent from the text of the PatFT database, and would lead to an expiration date of June 22, 2010.
4) But also looking at the image, we see there is a terminal disclaimer of an undisclosed nature. So we have to look at PAIR for more details (thankfully, this application was filed after 2000…otherwise we’d have to order the file history to make this “simple” expiration determination.)
5) Scanning the file wrapper shows that term is disclaimed beyond the term of U.S. Patent No. 7,546,699 – the parent patent. If the parent patent expires before June 22, 2010, then so does our ‘710 patent.
6) What is the expiration date of the ‘699 patent? This is actually a more interesting
question, and probably would require the courts to resolve. But we can safely say that it is after June 22, 2010:
a. The earliest claimed priority date from the face/text of the '699 patent is August 10, 1992. Plus there is 257 days of term extension (the extent to which the first office action exceeded 14 months from filing, minus applicant delay). That would mean an expiration date of April 25, 2013.
i. Red Herring: the June 18, 1990 claim in the Oath/Declaration is not a proper priority claim. For one, the MPEP notes that a priority claim must be made in the Application Data Sheet and/or the specification. MPEP 201.11 III(D). Further, there is no notice of the relationship (continuation/divisional/CIP) here, as required.
b. But wait… the specification as originally filed included a priority claim to the January 10, 1990 application! If valid, that would mean an expiration date of September 25, 2010.
c. But wait again… the Applicant tried to delete this 1990 priority claim in a (second) preliminary amendment just four days after filing their application. That's a little-known trick, permissible all the way up to allowance (or after, with a 1.312 amendment).
d. But wait yet again… a week later, the Examiner found the amended specification unacceptable, and required Applicant to submit a substitute specification which “must include all of the desired changes.” [Q: Did this nullify the amendment?]
e. So the Applicant submitted a substitute specification – but Oops.. the substitute spec was identical to the original specification, and included the same January 10, 1990 priority claim.
f. And, of course, the printed patent issued with the deletion of the priority claim! [Q: What happens if the patentee tries to enforce this patent for infringement after June 21, 2010? And what if they mark products after that date?] (Unclear is why the published application, 2007-0240332, included the 1990 priority claim.)
7) So the ‘699 patent expires in either September 2010 or April 2013. Since both of those are after June 2010, it appears safe to consider the term of the ‘710 patent to expire June 22, 2010.
Congratulations to Rick, who ended up at the right result without doing any of the necessary work. JV gets credit, as well, as the inclusiveness of the last day is unsettled.
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