14Apr 2016

The Beginning of the End for Patent Term Adjustment by Silvia Salvadori, PhD{1:40 minutes to read} In evaluating the case Magna Electronics, Inc. v. TRW Automotive Holdings Corp., I pose an important question: Is this the end of the patent term adjustment?

What are the facts of the case?

The patent at issue (U.S. Patent No. 7,339,149, hereinafter “the ‘149 patent”) was filed November 16, 1999, by Magna with a priority date of February 26, 1993. The ‘149 patent was issued on March 4, 2008, after an interference proceeding which led to a patent term adjustment of 498 days.

The cited patent had a filing date of October 6, 2006, and was a continuation of the ‘149 patent.  It issued on July 22, 2008, with only 63 days of a patent term adjustment but expired on February 26, 2013, because of a terminal disclaimer over a grandchild of a patent at issue, which did not earn any patent term adjustment.

Thus, the challenged patent was a parent patent which had earned patent term adjustment while the cited patent was its later grandchild with only a twenty-year term.

The District Court cited the case Gilead Sciences, Inc. v. Natco Pharma Limited, in which the court held that a patent that issues after—but expires before—another patent can qualify as a double patenting reference for that other patent.

However, the patents at issue in Gilead were not parent-child patents. Is this the end of the patent term adjustment?

 

Contact me with questions or comments at silvia@salvadorilaw.com.

 

Silvia Salvadori, PhD

Silvia Salvadori, PhD

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