Asked in Patents (Intellectual Property)

Q: how long is a patent valid?

How long is a patent valid since the date of patent?

Is a patent in US valid world wide?

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: PATENT TERM

Patent term is more confusing than it should be. The one part that is simple, is that patent term is not a function of the technology. There is not a way for the applicant to apply to extend the patent term (unlike trademarks or copyrights). (but as noted below, there are things that can shorten the term) It is the same for dishwasher patents or patents on an ultrasound machine. Unfortunately, to try to make things fair, the rules have a number of layers.

Old rules were that patents had a term of 17 years from when they issued. New rules are that apply to patent applications filed after June 8, 1995 are 20 years from the first non-provisional patent application. Applications pending on June 8, 1995 get to choose between the old and new rules so it is possible that something could pop out with a 17 year term that was filed before June 8, 1995 but that is pretty rare.

So you ignore the filing date of the provisional application (if any) and look to the oldest non-provisional patent application in the chain of priority. Some applications claim priority back to an earlier non-provisional application via a divisional application, continuation application, or continuation-in-part application.

There are several things that can change this default 20 year term

1) Patent Term Adjustment -- These are bonus days added to the end of the term to make up for the Patent Office being slow in doing their job. This is printed on the patent.

2) Patent Term Extension -- There are extra days added to things undergoing certain types of regulatory review such as review of a new drug at the FDA. The thought is that patent days should not tick off the clock while you are not allowed to sell the product.

3) Sometimes two patent applications are deemed similar by the patent office and they tie the end date of the second application to the end date of the first application. This is called a terminal disclaimer and rarely has a huge impact due to the new 20 year rule.

4) The patent owner has the option of disclaiming the rest of the patent term. This rarely happens but could if the patent owner was worried about an antitrust charge from maintaining a blatantly invalid patent.

5) Some patents become toothless as the claims are deemed invalid or unenforceable in litigation.

4) The patent may expire early if the patent owner does not pay a renewal fee by start of years 4, 8, and 12. This fee is called a maintenance fee. You can see the status using Public PAIR or you can check at https://fees.uspto.gov/MaintenanceFees.

Finally, with respect to design patents that cover the distinctive ornamental appearance filed after May 13, 2015, the term is 15 years from issuance. (No maintenance fees, no Patent term adjustment)

Your patent attorney can sort through these nuances if this seems overwhelming.

I hope this helps.

Kevin E Flynn

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: A United States Patent Applies to the United States.

A United States Patent applies to actions in the United States. So making a product in China and importing to the US would be covered. Also making a product in the US and exporting to Canada would be covered.

However, a product made in China could be sold into Canada as long as it does not pass through the US on the way to Canada.

Many companies seek patents in other countries that match the patent that they have in their home country. So it is possible that there are similar patents on this product in other countries. You can sometimes find related patents by looking for details on patent families in a system like Patentscope at WIPO. But this is not foolproof as there may have been parallel filings which might not show up as family members. Best bet is to ask a patent attorney in the country of interest to see if there is an analogous patent. The patent attorney can look by title, inventor, assignee, and use other tricks.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at

https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

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