Appeal No. 1999-0610 Page 8
Application No. 08/601,186
Appellants' only argument with regard to the rejection of
claims 49 through 60 under the judicially created doctrine of
double patenting is that "no such terminal disclaimer is
necessary under the current law where there is no possible
extension of patent term beyond the 20-year term of the
parent" (brief, page 10). In essence, appellants' argument is
that, under the terms of 35 U.S.C. § 154(a)(2) , the term of a6
patent issuing on the instant application cannot possibly
extend beyond the term of U.S. Patent No. 5,531,715. This
assertion is not correct.
While section 154(c)(1) would appear to set the end of
the term of U.S. Patent No. 5,531,715 on July 2, 2013 (the
longer of 20 years from the filing date and 17 years from the
issue date) and section 154(a)(2) would appear to limit the
term of any patent issuing on the instant application to May
12, 2013 (20 years from the earliest filing date claimed under
section 120), appellants' argument overlooks the fact that
Public Law 103-465 (1994) amended 35 U.S.C. § 154(a)(2) to provide6
that any patent issuing on a utility or plant application filed on or after
June 8, 1995 will expire 20 years from its filing date, or, if the application
claims the benefit of an earlier filed application under 35 U.S.C. § 120, 121
or 365(c), 20 years from the earliest filing date for which a benefit under
35 U.S.C. § 120, 121 or 365(c) is claimed.
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