Maintaining the Term of a Patent
Patents play a crucial role in protecting intellectual property and fostering innovation. For inventors, entrepreneurs, and businesses alike, understanding the term of a patent is essential for making informed decisions about their intellectual property strategy. This comprehensive guide will explore the duration of different types of patents, factors that can affect patent terms, and strategies for maximizing patent protection.
Types of Patents and Their Standard Terms
There are three main types of patents in the United States, each with its own standard duration:
Utility Patents Utility patents are the most common type, covering new and useful processes, machines, manufactures, or compositions of matter. These patents have a standard20 year term of a patent from the filing date of the earliest U.S. or international patent application to which priority is claimed
Design Patents Design patents protect the ornamental design of a functional item. For design patent applications filed on or after May 13, 2015, the term of a patent is 15 years from the date of grant. For applications filed before this date, the term is 14 years from the date of grant
Maintenance Fees
For utility patents based on applications filed on or after December 12, 1980, the 20-year term of a patent is subject to the payment of maintenance fees. Maintenance fees are fees paid to the government to continue to receive the benefits of a patent. Patent maintenance fees must be paid 3 and one-half years, 7 and one-half years, and 11 and one-half years from the date the patent is granted. A fee schedule is maintained in the Code of Federal Regulations, and the fee amounts vary depending on whether or not the patent holder is a small or micro-entity, which the United States Patent and Trademark Office (USPTO) defines. A small or micro-entity is typically an independent inventor, a small business concern, or a nonprofit organization.
Maintenance Fee Grace Period
If fees are paid within the six-month period following the due dates, the maintenance fees may be paid without surcharge. If the maintenance fees are not paid, the patent will expire. However, there is an additional six-month grace period after the due date within which the maintenance fees may be paid, along with a surcharge, in order to keep the patent in force.
Abandoned Patent
The USPTO does not remind patent holders when maintenance fees are due; however, if maintenance fees are not paid on time, the USPTO will attempt to remind a patent holder that maintenance fees may still be paid during the grace period along with a surcharge.
Petition for Reinstatement
If the maintenance fees are not paid by the end of the grace period, the USPTO allows a patent holder to petition the USPTO for the application of an unintentionally or unavoidably delayed payment and for reinstatement of an expired patent. However, during the time from the expiration and reinstatement of the patent, another person or business may establish rights to use, sell, import or distribute the patented invention or process. Depending on the circumstances, a court may allow such use of the patented invention or process to continue even after the patent is reinstated in order to protect the investment of the person or business, which had a right to presume that the patent had been abandoned when it was allowed to expire.
Factors Affecting Patent Terms
While the standard terms provide a general framework, several factors can influence the actual duration of patent protection:
Patent Term Adjustment (PTA) The USPTO may extend the term of patent (not design patents) if there are delays in patent prosecution caused by the patent office. This adjustment aims to compensate for administrative delays beyond the applicant’s control
Patent Term Extension (PTE) Certain patents, particularly those related to pharmaceutical products or medical devices, may be eligible for a patent term extension. This extension compensates for regulatory review periods required by the FDA, which can significantly delay the product’s market entry
Terminal Disclaimer In some cases, a patent applicant may need to file a terminal disclaimer, which can limit the enforceable term of a patent. This typically occurs to overcome obviousness-type double patenting rejections
Strategies for Maximizing Patent Protection
To make the most of your patent’s lifespan, consider the following strategies:
1. File Early. Since the patent term begins from the filing date for utility and plant patents, it’s crucial to file as early as possible in the innovation process. This ensures maximum protection time once the patent is granted
2. Utilize Provisional Applications. Filing a provisional patent application can establish an earlier priority date while giving you an additional year to prepare a full non-provisional application. This can effectively extend your protection period
3. Consider International Filing. For global protection, file international patent applications under the Patent Cooperation Treaty (PCT). This can provide up to 30 months from the priority date to file national phase applications in desired countries
4. Develop a Patent Portfolio. Instead of relying on a single patent, develop a portfolio of related patents. This can provide layered protection and extend the overall duration of your intellectual property rights
5. Monitor and Pay Maintenance Fees. Set up a system to track and pay maintenance fees on time. This ensures your utility patents remain in force for their full term
6. Explore Patent Term Extension Opportunities. If your invention relates to products requiring regulatory approval, investigate the possibility of patent term extensions to compensate for the review period
7. Conduct Regular Patent Reviews. Periodically review your patents and pending applications to identify opportunities for new filings based on improvements or variations of your invention
The Role of Patent Attorneys in Maximizing Protection
Navigating the complexities of patent terms and developing strategies to maximize protection requires specialized knowledge and experience. Patent attorneys play a crucial role in:
- Developing comprehensive patent strategies aligned with business goals
- Ensuring timely filing and prosecution of patent applications
- Managing patent portfolios and maintenance fee schedules
- Identifying opportunities for patent term adjustments or extensions
- Advising on international patent protection strategies
- Staying current with changes in patent laws and regulations
Conclusion
The term of a patent is a fundamental aspect of intellectual property protection, directly impacting the value and strategic importance of innovations. By understanding the factors that influence patent duration and implementing effective strategies, inventors and businesses can maximize the benefits of their intellectual property.Given the complexities involved in patent term management and the significant impact it can have on business success, working with an experienced patent attorney is invaluable. These professionals can provide the expertise needed to navigate the patent system effectively, ensure maximum protection for your innovations, and align your intellectual property strategy with your business goals.Don’t leave the protection of your valuable innovations to chance. Contact our experienced patent attorneys today to discuss how we can help you maximize the term and value of your patents. Our team is ready to assist you in developing a comprehensive patent strategy that safeguards your intellectual property and supports your long-term business objectives