Maintaining the Term of a Patent

Maintaining a Patent: Protecting Your Invention for the Long Haul

In the world of intellectual property, obtaining patent protection is just the beginning of a journey.  While a patent can last up to 20 years, for patents issued after December 12, 1980 in the U.S., maintaining a patent requires maintenance fee payments to preserve your exclusive rights and ensure your innovation continues to provide value. This post explores the intricacies of maintaining a patent, comparing it to other forms of intellectual property protection, and provides insights into best practices for patent owners.

The Basics of Maintaining a Patent

Patent maintenance fees on Utility Patents 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 by the USPTO, and the fee amounts vary depending on whether or not the patent holder is a regular, small or micro entity, which the United States Patent and Trademark Office (USPTO) defines as an independent inventor, a small business concern, or a nonprofit organization. If they are paid within the six-month period preceding 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.

Interesting Facts About Patent Maintenance

1. The “Submarine Patent” Phenomenon: Before the 1995 change in U.S. patent law, some inventors would intentionally delay the issuance of their patents, sometimes for decades, to extend the effective monopoly period. This practice, known as “submarine patenting,” is no longer possible due to the 20-year term from the filing date.
2. Einstein’s Refrigerator Patent: Albert Einstein and Leo Szilard patented a refrigerator design in 1930. However, they failed to pay the maintenance fees, allowing the patent to lapse before its full term.
3. The Most Expensive Patent Maintenance: Some patents, particularly in the pharmaceutical industry, with lots of claims and international in scope can cost millions of dollars to maintain over their lifetime especially when considering research, development, and litigation costs.
4. Patent Maintenance Fees Increase Over Time: In the U.S., patent maintenance fees increase at 3.5, 7.5, and 11.5 years after the patent grant, encouraging patent holders to carefully consider the continued value of their patents.
5. Virtual Patent Marking: The America Invents Act introduced virtual patent marking, allowing patent holders to list their patents on a website rather than physically marking each product, simplifying the process of maintaining patent notice.

Maintaining a Patent vs. Other Forms of IP Protection

Understanding how maintaining a patent differs from other forms of intellectual property protection is crucial for effective IP management:

Patents vs. Copyrights

While maintaining a patent requires periodic fee payments and active management, copyrights generally do not require maintenance fees. Copyrights automatically protect original works of authorship for the life of the author plus 70 years. However, registering a copyright with the U.S. Copyright Office provides additional benefits, such as the ability to sue for infringement.

Patents vs. Trademarks

Trademarks, which protect brands and logos, require different maintenance procedures compared to patents. While maintaining a patent involves paying maintenance fees at specific intervals, trademarks require periodic renewals and continued use in commerce. Trademark owners must file a Declaration of Use between the 5th and 6th year after registration and renew the mark every 10 years.

Patents vs. Trade Secrets

Trade secrets, unlike patents, do not require formal registration or maintenance fees. However, maintaining a trade secret involves ongoing efforts to keep the information confidential. While patents offer protection for a limited time in exchange for public disclosure, trade secrets can potentially last indefinitely as long as secrecy is maintained.

Best Practices for Maintaining a Patent

1. Set Up a Reliable Reminder System: Create a robust system to track maintenance fee due dates. Missing a payment can result in a lapsed patent.
2. Regularly Assess Patent Value: Periodically evaluate the commercial value of your patent to determine if continued maintenance is worthwhile. This is particularly important as maintenance fees increase over time.
3. Monitor for Infringement: Actively watch for potential infringements of your patent. Failure to enforce your rights can weaken your patent position.
4. Consider Licensing Opportunities: Explore licensing your patent to generate revenue and expand its use. Successful licensing can offset the costs of maintaining a patent.
5. Stay Informed About Legal Changes: Keep abreast of changes in patent law that may affect your rights or maintenance obligations.
6. Maintain Accurate Records: Keep detailed records of your invention’s development, patent prosecution history, and any enforcement actions. This documentation can be crucial in potential legal disputes.
7. Review Foreign Patent Maintenance: If you have international patents, be aware that maintenance requirements can vary significantly between countries. Develop a global strategy for maintaining your patent portfolio.

Failure to Maintain a Patent

In certain cases, if the maintenance fees are not timely paid, the USPTO may allow 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.

Challenges in Maintaining a Patent

While maintaining a patent is crucial for protecting your invention, it comes with several challenges:

1. Rising Costs: As maintenance fees increase over the life of a patent, the cost of maintaining a large patent portfolio can become substantial.
2. Technological Obsolescence: Rapid technological advancements may render some patents less valuable over time, requiring careful consideration of which patents to maintain.
3. Enforcement Difficulties: Identifying and proving patent infringement can be complex and costly, particularly for small inventors or companies.
4. Patent Trolls: The rise of non-practicing entities, often referred to as “patent trolls,” has complicated the patent landscape, sometimes making it challenging for legitimate inventors to maintain and enforce their patents.
5. Changing Legal Landscape: Evolving patent laws and court decisions can impact the strength and enforceability of existing patents, requiring ongoing legal assessment.

The Future of Patent Maintenance

As technology and the legal landscape continue to evolve, the process of maintaining a patent is likely to change as well. Some potential future developments include:

1. Increased Maintenance Fees: As the economic cost of living increases, the cost to maintain patents may increase. For example, the lifetime cost to maintain a Unitary Patent is over $161,000 (at todays exchange rate). The cost for paying the maintenance fees for a patent portfolio, over the life of a patent, can be substantial.
2. AI-Assisted Patent Management: Artificial intelligence may play a larger role in monitoring patent portfolios, predicting patent value, and even assisting in infringement detection.
3. Blockchain for Patent Records: Blockchain technology could provide a more secure and transparent system for recording patent ownership and maintenance activities.
4. Harmonization of International Patent Systems: Efforts to streamline and harmonize patent systems globally may simplify the process of maintaining patents across multiple jurisdictions.
5. Increased Focus on Patent Quality: Patent offices worldwide are emphasizing patent quality, which may lead to changes in how patents are examined initially, reexamined and maintained.

Conclusion

Maintaining a patent is a critical aspect of protecting your intellectual property and maximizing its value. Unlike other forms of IP protection, patents require periodic maintenence payments to remain in force. While maintaining a patent involves costs and effort, it’s an investment in your invention’s future.  If you have questions or concerns about a patent, contact one of our experienced patent attorneys. By taking a proactive approach to maintaining your patents, you can protect your innovations and leverage them for long-term success in the competitive world of technology and innovation.