Patent Office 'Overrules' Federal Circuit, Changes Standards for Patent Term Extension

January 2007

By: Brian T. Moriarty

New England In-House

The following is an excerpt from the article:

In a remarkable ruling, the U.S. Patent and Trademark Office (PTO) has narrowed the eligibility standards governing patent term extensions (PTEs) on the grounds that the Federal Circuit 1990 precedent, Glaxo v. Quigg, is no longer good law.

The PTO based its decision on a 2004 Federal Circuit case, Pfizer v. Dr. Reddy’s, which curiously doesn’t even mention the Glaxo case it supposedly overruled.

Section 156 of the Patent Laws allows medical device, veterinary, pharmaceutical, biotech and other companies to receive a PTE of up to five years to compensate them for the effective shortening of their patent terms due to the lengthy regulatory process needed to get their products approved.

Because a PTE attaches to the end of the original patent term when the product is mature and enjoying its maximum earning potential, a PTE is perhaps the most valuable patent right.

However, because the PTO has re-interpreted the governing law, fewer PTEs will now be available and the legal viability of some PTEs already issued has been thrown into doubt.

To read the full article, please click on the PDF tab above.

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January 2007

By: Brian T. Moriarty

New England In-House

The following is an excerpt from the article:

In a remarkable ruling, the U.S. Patent and Trademark Office (PTO) has narrowed the eligibility standards governing patent term extensions (PTEs) on the grounds that the Federal Circuit 1990 precedent, Glaxo v. Quigg, is no longer good law.

The PTO based its decision on a 2004 Federal Circuit case, Pfizer v. Dr. Reddy’s, which curiously doesn’t even mention the Glaxo case it supposedly overruled.

Section 156 of the Patent Laws allows medical device, veterinary, pharmaceutical, biotech and other companies to receive a PTE of up to five years to compensate them for the effective shortening of their patent terms due to the lengthy regulatory process needed to get their products approved.

Because a PTE attaches to the end of the original patent term when the product is mature and enjoying its maximum earning potential, a PTE is perhaps the most valuable patent right.

However, because the PTO has re-interpreted the governing law, fewer PTEs will now be available and the legal viability of some PTEs already issued has been thrown into doubt.

To read the full article, please click on the PDF tab above.

PDF FileView as PDF

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