“The USPTO ought to revise its techniques to refuse upkeep price funds for expired patents or give a warning if one makes an attempt to pay a upkeep price on an expired patent.”
Editor’s notice: The USPTO didn’t reply to IPWatchdog’s request for touch upon this text.
Is your organization paying america Patent and Trademark Workplace (USPTO) upkeep charges for expired patents? The USPTO requires fee of upkeep charges to maintain a granted patent in drive due at 3.5 years, 7.5 years, and 11.5 years after the date of grant of a patent. For 2023, these charges quantity to $2,000, $3,760, and $7,700, respectively. Chances are you’ll be unknowingly paying upkeep charges for expired patents.
Whereas there are a selection of cogent causes for not paying a upkeep price, some of the compelling instances for not paying is that if the patent in query has already expired. Whereas the time period of a patent might fluctuate topic to sure changes—because of delay throughout prosecution, delay for approval of a patented invention by a regulatory company, such because the Meals and Drug Administration (FDA), a terminal disclaimer, and many others.—most patents issued within the final 20 years have a time period of both 17 years from grant or, extra doubtless, 20 years from the applying submitting. If the patent claims precedence to an earlier patent as a continuation or divisional utility, then the efficient submitting date of that later filed patent is the submitting date of the earliest utility within the precedence chain of the later filed utility.
Accordingly, a patent claiming precedence to an earlier patent or utility might have a time period that could possibly be considerably much less than 17 years after grant or 20 years from submitting. Certainly, the time period of such a patent claiming precedence to earlier filed functions might not even attain the dates—3.5 years, 7.5 years, or 11.5 years after grant—at which a upkeep price can be due. In case your patent has expired, for instance, 10 years after the grant, it will be a waste of cash to pay the 11.5-year upkeep price.
The Drawback
The USPTO, nonetheless, has a quirk in its upkeep price fee system that doesn’t forestall, and even warn, a patentee towards paying a upkeep price on an expired patent, although the USPTO is aware of the precise day that patent will expire. To compound this drawback, the USPTO requires a patentee to make an announcement that the patentee agrees that the upkeep price as soon as paid can’t be refunded. The USPTO has no safeguard towards unintended funds of upkeep charges.
This isn’t only a theoretical drawback. In a single occasion, for a patent owned by a patentee recognized to those authors, the 11.5-year upkeep price fee window opened April 21, 2022, however the patent expired on Could 13, 2022. The USPTO accepted the upkeep price fee on June 27, 2022, although the patent workplace knew the patent was already expired. In one other occasion, in the identical patent household, one other patent fee window was listed as “open” for fee on June 27, 2022, when the patent once more had expired on Could 13, 2022, as a result of it hailed from the identical precedence chain.
In some cases calculating the expiration date of a patent by a patentee is probably not trivial. The time period of a patent is mostly 20 years from submitting of the applying on which it’s primarily based, however this time period is topic to adjustment because of delay in prosecution on the a part of the applicant, the USPTO, or delay by a regulatory company concerned in approving a patented product, for instance, a brand new drug. Additional, a patent could also be topic to an earlier expiration date than may in any other case be anticipated because of a Terminal Disclaimer filed in response to a double patenting rejection throughout prosecution. Many patentees use automated techniques for the fee of upkeep charges which is probably not subtle sufficient to take all of those components into consideration and to really know whether or not a patent stays in drive on the time a upkeep price is due.
The USPTO, then again, is aware of precisely when a patent will expire, because it tells you about any patent extension on the face of an issued patent itself, and if not contested inside sure deadlines, that date turns into absolute. Why is it then the USPTO fortunately accepts such “donations”?
Though the fee of a upkeep price have to be accompanied by an announcement that the patentee agrees that the upkeep price as soon as paid can’t be refunded, the authors of this paper filed a request for refund of the mistakenly paid upkeep price famous above on September 29, 2023. The USPTO issued the refund on January 12, 2024 although the patentee had made the assertion agreeing that the upkeep price couldn’t be refunded.
Put Safeguards in Place
The USPTO ought to revise its techniques to refuse upkeep price funds for expired patents, and provides a warning if one makes an attempt to pay a upkeep price on an expired patent. The requirement for a patentee to make the assertion agreeing that the upkeep price as soon as paid can’t be refunded must also be faraway from the USPTO upkeep price fee system, or at the least clarified to point that this settlement applies solely to upkeep charges paid on lively patents, as, in these authors’ expertise, upkeep charges mistakenly paid on expired patents can certainly be refunded.
Till the USPTO implements safeguards to stop fee of upkeep charges on expired patents, patentees ought to you’ll want to test whether or not a patent continues to be in drive previous to paying any upkeep charges on it. If your organization makes use of an automatic system for the fee of patent upkeep charges, it ought to embody a function to confirm, previous to fee of a upkeep price, that the patent in query has not but expired. Don’t waste your organization’s cash paying upkeep charges on expired patents.
Picture Supply: Deposit PHotos
Writer: gannenko
Picture ID: 689813496
