Can You Extend the Duration of a Patent?

Harness, Dickey & Pierce, PLC

Understanding Patent Term Limitations

U.S. patents are granted for fixed terms and generally cannot be extended. Let’s explore the specifics:

  • A U.S. utility patent has a term of 20 years from its initial effective, non-provisional U.S. filing date. The U.S. Patent and Trademark Office (USPTO) may grant extensions for Patent Office delays during the application examination and certain delays in the FDA regulatory process. Conversely, the term can be shortened if the applicant includes certain disclaimers during prosecution.

  • Maintenance fees must be paid at 3 ½, 7 ½, and 11 ½ years after a utility patent is issued; otherwise, the patent expires at 4, 8, or 12 years, respectively.

  • A U.S. design patent remains in effect for 15 years from the date of issuance.

  • A U.S. plant patent has a term of 20 years from the date it is issued.

Without a change in the law, a patent cannot be extended beyond its original term. The only way to extend protection is to invent and patent an improvement to the originally patented invention. However, a new patent would only safeguard the improvement and not the original invention, which others would be free to copy and use after the expiration of the original patent.

Tax Deductibility of Patent Expenses

While legal expenses are generally tax deductible for businesses, the cost of obtaining a patent is usually considered a capital expense and depreciated over the useful life of the patent. It is also advisable for businesses to explore whether they qualify for a Research and Development tax credit, which could positively impact their tax situation. It’s crucial for applicants to consult with a tax professional for personalized advice.

Patent Protection Around the World

The good news is that nearly every country offers some form of patent protection. Unfortunately, there is no single patent document or governing body that can safeguard a patent worldwide. To achieve global coverage, protection must be obtained on a country-by-country basis. Regional patents are also available in Europe, Eurasia, Africa, and the Middle East. However, obtaining and maintaining worldwide patent coverage can be prohibitively expensive, even for well-funded applicants. Therefore, it’s essential to strategically focus efforts and allocate resources to where protection is most needed.

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For U.S. applicants seeking international patent protection, it is advisable to maintain the confidentiality of the invention until filing a U.S. application. Subsequently, corresponding foreign applications should be filed within one year of the U.S. filing date. In many countries, subject to specific international treaties, these applications may benefit from the U.S. filing date. Applicants can also submit an international preliminary patent application (PCT application), which delays the need to file individual applications in various countries and regions, although it does not eliminate the requirement altogether.

Transferring Patent Ownership

Indeed, patents are considered personal property and can be sold, licensed, mortgaged, gifted, or bequeathed either wholly or partially. However, it is vital to document such transfers in writing and register them with the U.S. Patent and Trademark Office.

When a patent is co-owned, each co-owner, regardless of their share, has the right to practice the patented invention and authorize others to do the same without seeking permission or accounting to the other co-owners. Therefore, prospective co-owners should reach an agreement regarding cost-sharing and the benefits associated with co-owning a patent before entering into such an arrangement.

Patenting an Idea

Strictly speaking, it is not possible to patent an idea itself. However, patent protection can apply to a specific product, machine, composition, or process based on an idea. While there are numerous deadlines and requirements, it is advisable to file a patent application as soon as possible, preferably before making the invention public.

How Patents Function

Once an invention is patented, the patent owner holds the exclusive right to prevent others from making, using, selling, offering for sale, or importing the patented invention. In cases of suspected infringement, a cease and desist letter can be sent to the alleged infringer, demanding that they stop their activities. If the infringer fails to comply, the patent owner has the right to file a lawsuit in Federal Court. If the infringement is proven, the court can award damages and issue an order to cease further infringement. In exceptional circumstances, when the infringement is deemed willful or extraordinary, the court may triple the damages awarded and require the infringer to cover the patent owner’s legal fees.

The Patent Granting Process

The journey toward obtaining a patent begins with filing a patent application with an issuing authority, such as the USPTO. The application is assigned to an examiner who evaluates its compliance with patentability requirements. In the United States, this involves assessing its novelty, non-obviousness, and utility.

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If the examiner determines that the invention does not meet these requirements, the applicant usually has an opportunity to respond. This back-and-forth exchange, known as the prosecution of the application, continues until the examiner reaches a final determination. If the applicant is dissatisfied with the outcome, they can typically appeal the decision with an internal board in the Patent Office and ultimately with the courts.

Once the application is allowed, the applicant must pay the issue fee. After a few months, the patent will officially be granted. The entire process takes an average of 25 months, although the timeframe can vary depending on factors such as the examiner and the subject matter. Expedited procedures are available to accelerate the process, if necessary.

Patenting a Product

The process of patenting a product commences with preparing and filing a patent application. Crafting a patent application is a complex task, best entrusted to a patent attorney. The attorney will draft the application based on the inventor’s disclosure, arrange for any necessary drawings, and electronically file the application with the U.S. Patent and Trademark Office. They will subsequently monitor and advocate for the application during the prosecution phase, which involves interacting with the patent office to secure allowance for at least one patent claim. This process typically takes two to four weeks to complete. The entire patent application process takes an average of about 25 months, although the timeline is subject to variation based on the examiner and the subject matter. Expedited procedures are available for expediting the process.

Patenting a Name

It is important to note that names cannot be patented; however, they can be protected as trademarks. Trademark rights are acquired through use. To enjoy the strongest protection, it is advisable to register a name as a trademark at the state or federal level. Federal registration provides nationwide protection and several additional benefits, such as proof of ownership, constructive notice of trademark rights, the right to exclude infringing products with support from U.S. Customs, and the ability to use the ® symbol. Registering a mark makes it more discoverable for others, decreasing the risk of accidental infringement. Infringement suits can be filed against individuals or entities that use a similar mark, potentially leading to damages and an order to cease further use of the infringing mark.

The Role of Patent Attorneys

Patent attorneys play various crucial roles, including conducting patentability searches for new inventions, preparing, filing, and prosecuting patent applications, helping clients license their patents, enforcing patents in court against infringers, and conducting clearance studies to ensure clients’ new products do not infringe existing patents. When clients face infringement lawsuits, patent attorneys defend them, aiming to prove non-infringement or invalidity of the patent in question.

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Understanding “Patent Pending”

The phrase “patent pending” on a product indicates that a patent application has been filed for the product. Although marking a product as “patent pending” is not a legal requirement, many applicants choose to do so. This label conveys to customers that the product incorporates innovative elements and serves as a warning to competitors, indicating that a patent could be granted at any time. Only products covered by a corresponding pending application should bear the “patent pending” designation. False marking could subject the responsible party to liability if harm is caused to anyone as a result.

What Patents Protect

U.S. patents fall into three main categories: utility patents, design patents, and plant patents. Utility patents cover a broad range of subject matter, including products, machines, compositions of matter, and processes, as well as the construction and functionality of the invention. Design patents protect the ornamental appearance of a product or a portion thereof. Virtually any product or component can be the subject of a design patent. Plant patents, on the other hand, safeguard asexually reproduced plants.

Revocation of Patents

A patent can be revoked before its expiration under three general circumstances. Firstly, if the patent owner or a third party requests a reexamination of the patent, and the patent office determines that the invention is not patentable. Secondly, a successful challenge can occur through a Post Grant Review or an Inter Partes Review proceeding initiated by a third party or through a lawsuit filed by a third party in Federal Court. Lastly, a utility patent can be revoked in case the patent owner fails to pay the mandated maintenance fees at 3 ½, 7 ½, and 11 ½ years after the patent issuance.

Patent Expiration

There are three types of U.S. patents: utility patents, design patents, and plant patents. A utility patent generally expires 20 years from the earliest effective non-provisional U.S. filing date. The term may be extended due to patent office delays or FDA regulatory process delays. Furthermore, certain disclaimers made during prosecution can potentially shorten the term. Failure to pay the maintenance fees at 3 ½, 7 ½, and 11 ½ years after issuance can also cause a utility patent to expire prematurely, at 4, 8, or 12 years, respectively.

A design patent remains in effect for 15 years from the date of issuance, while a plant patent has a term of 20 years from its earliest effective filing date. Design and plant patents do not require maintenance fees.