When the term of your patent is coming to an end, you may start considering ways to prolong its protection. One option that might come to mind is refiling an application for a patent on the same invention. But is this possible?
You Cannot Refile an Expired Patent for the Same Invention
Unfortunately, you cannot refile a patent to extend its lifespan for the same invention. However, there is another approach you can take to secure additional patent protection. You can obtain a separate patent for an improvement to the original invention. By doing so, you can extend the patent protection for your product or service.
Most inventors tend to worry about extending the life of their patents as the term nears its end. However, it is crucial to think about improving the product from the beginning and obtaining patents for those improvements. By constantly evolving the product and obtaining patents for new features, you can build a portfolio of patents that offer protection beyond the original patent’s term.
Building a Patent Portfolio
In my experience, one effective way to protect a new invention is to think in terms of a patent portfolio. Instead of focusing on obtaining a single patent, consider the benefits of having a collection of patents. While building a patent portfolio can be more expensive than obtaining a single patent, it provides broader and longer-lasting protection for your invention. This strategy is particularly useful for successful products.
Additionally, by adopting a strategic approach to building a patent portfolio, you can manage expenses based on business needs. The success of your product can fund future patent expenses, ensuring that you protect your invention effectively.
Understanding Patent Term
The term of a patent is typically 20 years from the filing date of the first nonprovisional patent application, along with any applicable extensions and terminal disclaimers. You can find the filing date of the first nonprovisional patent application on the patent’s front page. For example, if we consider U.S. Pat No. 8615689, the filing date of the first nonprovisional patent application is May 13, 2008.
Although the filing date of the application that matured into U.S. Pat. No. 8,615,689 is September 12, 2012, it is not the filing date of the first nonprovisional patent application in the chain of priority. The filing date of the first nonprovisional patent application is May 13, 2008. Based on this information, the patent term for U.S. Pat. No. 8,615,689 will expire on May 13, 2028, after which the invention enters the public domain.
Other factors can also impact the patent term, such as maintenance fees and terminal disclaimers. The patent owner must pay three maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the date of patent grant. Failure to pay these fees will result in the premature expiration of the patent. Additionally, a terminal disclaimer or examination delay can affect the patent term.
Consider these factors carefully when assessing whether your patent is approaching its term.
Securing Patents for Improvements
Knowing the life of your patent, it’s advisable to start early in extending protection for your product. During the initial stages of a product launch, when sales may be low, focus on minimizing legal expenses. Typically, few competitors will copy a product with limited sales. Therefore, aggressively building a patent portfolio may not be necessary at this stage. It’s important to evaluate the viability of your project before committing significant resources.
As your product gains traction, you will likely receive feedback and complaints from customers. By addressing these concerns and implementing solutions, you can patent the improvements you make. For example, if customers complain about the awkward positioning of a handle, you can develop a new, more ergonomic position and seek patent protection for this improvement. By filing a new patent application for each improvement, you can extend the overall patent protection for your product beyond the original patent term.
Over time, you will have built a robust patent portfolio that covers various features of your product.
Leveraging Patent Term Adjustments
Patent term adjustments can also help extend the life of your patent. After your patent is granted, you have 60 days to review and ensure that the patent office has correctly calculated your patent term adjustment. Failure to do so will result in your patent expiring 20 years from the filing date of the first nonprovisional patent application.
Patent term adjustments aim to provide the full protection period for a patent. If the patent office delays examining your application, you receive an equivalent number of days at the end of your patent term. Conversely, if you delay the examination, the equivalent number of days will be deducted from the patent term due to the patent office’s delay.
Reinstating an Expired Patent
To keep a patent enforceable for the full 20 years, the inventor must pay three maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the grant date. Failure to pay these fees will result in the expiration of the patent. However, if the failure to pay the fees was unintentional, the inventor can file a petition to revive the patent application.
How Much Does It Cost to File a Petition?
The cost of petitioning for an expired patent varies depending on the circumstances of the expiration. If a patent expires unintentionally, the USPTO might allow the owner to pay back maintenance fees to revive the patent. However, if the patent expires due to abandonment, the individual may need to pay a petition fee in addition to the back maintenance fees required for reviving the patent.
When considering the cost, expect it to range from $100 to $2,000. The price varies significantly because patents have different degrees and levels, each with its own set of maintenance fees. Reviving a patent is not an inexpensive process, so it’s essential to be aware of the associated costs.
How Do I File a Petition?
If you decide to reinstate a patent, you will need to visit the USPTO website to access the necessary forms, codes, and pricing information. The website can be overwhelming, so seeking assistance from a patent attorney or someone experienced in the patent process is advisable.
How Does a Patent Enter the Public Domain?
A patent enters the public domain under the following circumstances:
- The inventor does not obtain a patent for the invention.
- The maintenance fee for the patent is not paid.
- The patent term expires.
If you do not secure a patent for your product, your invention becomes dedicated to the public. Once you start marketing your product, you have one year to file a patent application; otherwise, your invention is considered public domain, and anyone can compete with you.
After obtaining a patent, you must pay maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the grant date. Failure to pay these fees results in the dedication of your patent to the public. The enforceability of a patent lasts for 20 years from the filing date of the first nonprovisional patent application. After this period, your invention enters the public domain.
Is it Possible to Gain Control of an Expired Patent?
Once a patent expires, it becomes dedicated to the public indefinitely. As a result, you cannot regain control of an expired patent.
If your product is successful, it is essential to build a portfolio of patents. Instead of waiting until your patent nears its term, take proactive steps to extend patent protection for your product. By continuously improving and patenting different features of your product, you can secure longer-lasting and more comprehensive protection. Remember, building a patent portfolio requires strategic planning and investment, but it offers significant advantages for your business.
Check out Garrity Traina for more information and expert advice on patents and intellectual property matters. They can help you navigate the complexities of patent protection and provide valuable guidance for extending the life of your patents.