When your patent nears the end of its term, you might begin to think about how you can extend the life of your patent. You might want to refile an application for a patent on the same invention. But, can it be done?
A patent cannot be refiled to extend the life of the patent on the same invention. However, another patent can be secured on an improvement to the original invention. With this strategy, patent protection for the patented product or service can be extended.
Most inventors worry about extending the life of the patent near the end of its term. But, if the patented product is successful, they ought to be thinking about how to improve the product from the start and how to get patents for those improvements. In this way, as the product evolves, they are building a portfolio of patents that could protect their invention for a period longer than the patent term of the original patent.
Building a patent portfolio
In my experience, one of the best ways to get patent protection for a new invention is to think in terms of a portfolio of patents. Do not think of patent protection as getting one patent on your invention. A patent portfolio is much more expensive than one patent. But, it provides significantly more benefits in terms of the length of protection and breadth of patent protection than just one patent. Now, this is only useful for products that are successful.
Plus, the way I recommend building a patent portfolio, expenses are incurred when there is a business need, and the product’s success pays for the future patent expenses.
The patent term is 20 years from the filing date of the first nonprovisional patent application in its chain of priority, plus any patent term extensions and any terminal disclaimers.
The filing date of the first nonprovisional patent application can be found on the front page of the patent. For example, for U.S. Pat No. 8615689, the filing date of the first nonprovisional patent application is May 13, 2008. See the image below.
The filing date of the application that matured into U.S. Pat. No. 8,615,689 is September 12, 2012. However, this 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 would be May 13, 2008.
The patent term for U.S. Pat. No. 8,615,689 is May 13, 2028. After this date, the invention is dedicated to the public. It is in the public domain.
Other factors can add to the term of the patent. For example, the patent owner must pay 3 maintenance fees at 3.5 years, 7.5 years, and 11.5 years anniversaries from the date of the patent grant. If these are not paid, then the patent will expire prematurely.
A terminal disclaimer may have been filed to secure the patent grant. The terminal disclaimer may also cut short the life of the patent.
The patent office might extend the patent term if the examination was delayed.
Keep these other factors in mind when you determine if your patent is approaching the end of its term.
Now that you know the life of your patent, my recommendation is to start thinking about how to extend protection for your product from the start. At the beginning of a product launch, the patented product might not have any significant sales. As such, keep legal expenses low. No one generally will copy your product when sales are low. As such, there is no need to build a patent portfolio aggressively. After all, you might be forced to abandon your project at this early stage of the product launch.
As you sell your product, customers will complain. When you solve your customer’s complaints about your product or service, these solutions may be patented.
For example, when you launch your new product, customers will complain. They may complain that its handle is awkwardly positioned. To address this complaint, you may reposition the handle more ergonomically. This new position may be patented. Seek patent counsel to find out if you should get a patent on this new feature.
You can file a new patent application on the improvement. This new patent application would have been filed after the filing date of the original patent application. As such, the term of any patent maturing from the new patent application will be longer than the original patent term.
You are extending the life of your product by patenting different features of the product as these new features are being incorporated into the product.
Each improvement can be the basis for another patent and thus extend patent protection for the product.
Over a period of time, you would have built a patent portfolio around the features of the product.
Patent Term Adjustments
Patent term adjustments can also extend the life of your patent. When your patent is granted, you have 60 days to double-check whether the patent office properly calculated your patent term adjustment. Otherwise, your patent will expire 20 years after the filing date of the first nonprovisional patent application.
Patent term adjustments are designed to help you get patent protection for the entire term of a patent. If the patent office delays examining your patent application, you get an equivalent number of days at the end of your patent term. Now, if you delay the examination of your patent application, you get an equivalent number of days reduced to the patent office’s delay.
Reinstating an expired patent
For a patent to remain enforceable for 20 years, the inventor has to pay three (3) maintenance fees at 3.5 years, 7.5 years, and 11.5 years intervals from the date of grant of the patent. Failure to pay the maintenance fee will result in the expiration of the patent.
If the failure was unintentional, then the inventor can file a petition to revive the patent application.
How Much Does It Cost to File a Petition?
The cost to petition an expired patent is going to vary based on the conditions of the expiration.
- If a patent expires unintentionally, the USPTO might allow the owner to pay the back-maintenance fees to revive the patent.
- If the patent expires because it was abandoned, the individual might be required to pay a petition fee as well as back maintenance fees to revive the patent.
When planning for the cost, you can plan on anywhere from $100 – $2,000. As you look at the cost, you will see a large variance in price; this is simply because there are patents of varying degrees and levels, with different maintenance fees. It is important to know the revival of a patent is not an inexpensive endeavor.
How Do I File a Petition?
Suppose you are ready to bite the bullet and begin the process of reinstating a patent. In that case, you will need to spend some time on the USPTO website, where you will find all of the necessary forms, codes, and prices. It can be a bit overwhelming when looking at the site, so you may wish to enlist the help of an attorney or another individual experienced with the patent process.
How Does a Patent Become Public Domain?
Patents enter the public domain if:
- The inventor did not get a patent on the invention,
- You did not pay the maintenance fee on the patent, or
- The term of the patent has lapsed.
If you did not get a patent on your product, your invention has been dedicated to the public. When you start marketing your product or invention, you have exactly one year from that date to file a patent application. If not, you have dedicated your invention to the public. Anyone can compete against you.
After you get a patent, you have to pay a maintenance fee 3.5 years, 7.5 years, and 11.5 years after the date of grant of your patent. If you don’t pay the maintenance fee, your patent has been dedicated to the public.
The patent is enforceable for 20 years upon the filing of the first nonprovisional patent application in its claim of priority. After 20 years of patent protection, your invention has been dedicated to the public.
Is it Easy to Take Control of an Expired Patent?
You cannot take control of an expired patent. The patent is dedicated to the public forever.
Build a portfolio of patents if your product is successful. Don’t wait till the patent nears its term to take action to extend patent protection for your product.