Terminally Disclaimed Patents Are Not Barred from Obtaining a § 156 Extension

Thanks to the Patentably-O Blog for pointing to King Pharmaceuticals v. Teva Pharmaceuticals, (D. NJ, January 20, 2006) where the U.S. District Court concluded that a terminally disclaimed patent is still eligible for patent term extension under 35 U.S.C. § 156:

Section 156 plainly states that a patent satisfying the enumerated conditions “shall be extended.” “The word 'shall' generally indicates a command that admits of no discretion on the part of the person instructed to carry out the directive.” Assoc. of Civil Tech. v. Fed. Labor Rel. Auth., 22 F.3d 1150, 1153 (D.C. Cir. 1994). Thus, if the enumerated conditions are satisfied, the patentee is entitled to a term extension calculated pursuant to § 156.

Further, § 156 makes no reference whatsoever to terminal disclaimers. Section 156's direction that a patent term extension “shall” be granted if the conditions are met contains no exception for patents subject to a § 253 terminal disclaimer. This Court may not read language in or graft meaning on to § 156, and hence may not create an exception for terminally disclaimed patents where Congress did not see fit to do so. See, e.g., Rabinowitz, 550 F. Supp. at 486. Moreover, as noted, Congress expressly listed conditions necessary for obtaining a § 156 patent term extension. 35 U.S.C. § § 156(a)(1)-(5) (2005). Applying the interpretative maxim expressio unis est exclusio alterius (the expression of one thing is the exclusion of the other), see, e.g., U.S. v. State of New Jersey, 194 F.3d 426, 429 (3d Cir. 1999), the Court concludes that the only limitations on the provision of a § 156 patent term extension are those expressly enumerated at § 156(a)(1)-(5). Nonexistence of a terminal disclaimer is not among those enumerated conditions, and, therefore, cannot be construed to be a condition for obtaining a § 156 patent term extension.

Accordingly, there is no textual basis in § 156 for making terminally disclaimed patents ineligible for a § 156 extension. . . .

Click here for a list of Patent Terms Extended Under 35 USC § 156