Appeal 2007-1119
Application 10/200,207
subject[ing] the original patent to the twenty-year patent term
under 35 U.S.C. § 154(a)(2).
(Reissue Declaration at 2.) The practical effect of having filed Continued
Prosecution Applications is that the term of the 219 patent expires 20 years
from 7 May 1987, i.e., on 7 May 2007, which is five days after the date on
which oral argument was held. See 37 C.F.R. § 1.53(d) (1998)4. In
contrast, Applicants assert that they are entitled to "the full term of the
original patent," which they argue should have been 17 years from the date
of issue.
4 37 C.F.R. § 1.53(d) reads in most relevant part:
(7) A request for an application under this paragraph is the
specific reference required by 35 U.S.C. 120 to every
application assigned the application number identified in such
request. No amendment in an application under this paragraph
may delete this specific reference to any prior application.
37 C.F.R. § 1.53(d)(7) (1998) (emphasis added).
This provision was explained in the Notice of Final Rule Making
issued in 1997 in the following words:
an application under § 1.53(d) cannot be amended to delete the
specific reference to the prior application, as well as the specific
reference to any application to which the prior application
contains a specific reference under 35 U.S.C. 120, 121,
and 365(c). As an application under § 1.53(d) will also contain
a specific reference to at least one other application under
35 U.S.C. 120, 121, and 365(c), the expiration date under
35 U.S.C. 154(b)(2) of any patent issuing from the application
under § 1.53(d) will be based upon the filing date of the prior
application (or the earliest application to which the prior
application contains a specific reference under 35 U.S.C. 120,
121, and 365(c)).
62 Fed. Reg. 53145 (10 October 1997) (emphasis added).
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