New Orleans, LA asked in Copyright, Intellectual Property and Patents (Intellectual Property) for Louisiana

Q: Is this patent still good?

I have the molds for these boats and was checking to see if patent expired

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: You did not ask this question but there is a separate special form of intellectual property protection for boat hulls to keep people from making molds. Here is a starting point for checking on this.

https://www.copyright.gov/vessels/

Registration of Vessel Designs

The Vessel Hull Design Protection Act, title 17, Chapter 13 of the United States Code, was signed into law on October 28, 1998, providing for protection for original designs of vessel hulls. The law grants an owner of an original vessel design certain exclusive rights if application for registration of the design is made with the Copyright Office within two years of the design being made public. Protection is afforded only to vessel designs embodied in actual vessel hulls that are publicly exhibited, publicly distributed, or offered for sale or sold to the public on or after October 28, 1998. The Copyright Office has promulgated interim regulations for registration of vessel designs.

Registration of a vessel design must be made on a Form D-VH. A continuation sheet, Form D-VH/CON, may be used if additional space is required. To be considered for registration, a submitted application must include the following elements:

A completed and signed Form D-VH;

Deposit material identifying the designor designs for which registration is sought; and

The appropriate fee. The basic application fee for each design covers up to three pages of deposit material. For more than three pages of deposit material, there is an additional charge.

The deposit material must consist of either drawings or photographs of the design. Because the drawings or photographs constitute the entire visual disclosure of the design, they should be clear and complete and should include a sufficient number of views so that the appearance of the design is adequately shown. Please consult the “Basic Information” section of Form D-VH for the requirements for deposit material.

A single application may be used for more than one design embodied in a vessel provided that the information contained in all spaces of the application other than space 2 is the same for each design. See the instructions for space 2 on Form D-VH and use Form D-VH/CON.

The effective date of a vessel design registration is the date on which the Copyright Office publishes notice of the registration. Notice of registration will be published on the Copyright Office website, and registrations may be viewed, in reverse chronological order, on our Vessel Design Registration page.

Although design protection and copyright protection under title 17 of the United States Code are both administered by the Register of Copyrights, they are not identical. Design protection differs significantly in most respects, including term of protection, ownership, eligibility, scope of protection, and registration procedures. While some designs that are eligible for design protection may also be eligible for copyright protection, design registration does not include a copyright registration. Copyright registration must be made separately.

Design protection under the Vessel Hull Design Protection Act is not available, and registration may not be made, for designs that have received patent protection under title 35 of the United States Code.

When a design protected under the Vessel Hull Design Protection Act is publicly exhibited, publicly distributed, or offered for sale or sold to the public, a design notice should appear on the vessel in the manner described in section 212.4 of the interim regulations. In place of the name of the owner of the design, the notice may contain a distinctive identification of the owner if the distinctive identification has been recorded with the Copyright Office.

I hope this helps.

Kevin E Flynn

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