Asked in Patents (Intellectual Property)

Q: I was the CEO of SuriLight I like to know (1)if any of our patents are still valid. How the 20 yrs expiration counted

(2) how can we recover the patent right, if we forgot to pay the annual fee.

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

A: This is a shame. It indicates a breakdown in the teamwork between a patent attorney and a client.

Let me answer your question in pieces.

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.

6) 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.

Second -- the patent office if very generous in allowing a patent to be revived if it went abandoned for an UNINTENTIONAL failure to pay a maintenance fee. There is a hefty fee to be paid for each patent and you need to provide additional details if it took you more than 2 years to sort this out.

See https://www.uspto.gov/web/offices/pac/mpep/s2590.html

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

FLYNN IP LAW

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

A: NOTE -- now that you have become aware of that the patents have lapsed for failure to pay maintenance fees, you must act to get them reinstated. If you delay taking action then you will lose the right to properly renew them as the entire delay won't be unintentional as there was a delay at the end that was not unintentional.

NOTE that if the folks at SuriLight who had the right to make the decision on whether to pay the maintenance fees opted to not pay them then it may be that an intentional decision to not pay the fees was made and it may not be reversible. Those facts will require a deeper dive by a patent attorney in a confidential consultation.

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