Patent Term: Everything You Need to Know
A patent term is the length of time for which patent protection lasts. After June 8, 1995 utility and plant patents last 20 years from filing date.8 min read
2. Why Is a Patent Term Important?
3. Reasons to Consider Not Using a Patent Term
4. Reasons to Consider Using a Patent Term
6. What Could Happen When You Use a Patent Term?
7. What Could Happen When You Don't Use a Patent Term?
8. Frequently Asked Questions
9. Steps to File
What is a Patent Term?
A patent term is the length of time for which patent protection lasts. Prior to June 1995, utility and plant patent terms were 17 years from the date the patent was granted. In the Trade-Related Aspects of Intellectual Property Rights Agreement, Article 33 stated that the U.S. had to establish a minimum patent term that was no less than 20 years from the application date. The agreement came out of the Uruguay Round Agreements of the General Agreement on Tariffs and Trade, which amended 35 U.S.C. §154, and went into effect on June 8, 1995.
The patent term for any utility or plant patent application filed after June 8, 1995, is 20 years from the filing date. Any application filed before that date would have a term of either 20 years from the filing date or 17 years from the patent issue date, whichever is longer. The general rule for a patent term in the U.S. is 20 years, although the patent holder must continue paying any necessary maintenance fees to keep the patent current.
The exception to the 20-year patent term applies to design patents, which have a 15-year term. Design patents did not fall under the Trade-Related Aspects of Intellectual Property Rights Agreement, which is why they do not apply to the required 20-year minimum. In May 2015, the design patent term changed from 14 years to 15 years, so those issued prior to May 2015 would still have the shorter term.
Some patents are eligible for term adjustments. An adjustment could apply if the application was delayed with the USPTO beyond certain limits. These extensions are called "patent term adjustments" and are marked with an asterisk on the patent. Only applications filed on or after May 29, 2000 would be eligible for patent term adjustments. Any delays caused by the applicant would not make the patent eligible for a delay or extension.
In certain extreme delays, often relating to government approvals, the patent term also can be extended. An extension of this nature usually applies to pharmaceuticals, medical devices, food products, and medical procedures. When the FDA or other governmental agencies are reviewing the product, the approval might come after or just before the patent term expires. The difference between a patent term adjustment and a patent term extension is who causes the delay.
A patent term could also expire earlier than the typical length of time because the holder failed to pay necessary maintenance fees.
International patent terms are different than those enforced in the U.S. If you filed an application for an international patent on or after June 8, 1995, the patent term would be 20 years from the filing date. If you filed a continuation or partial-continuation application, the term is 20 years from the filing date of the parent application. There is no foreign priority when considering the patent term, and the 20-year term applies from the filing date.
Why Is a Patent Term Important?
A patent term is important because it dictates how long an invention, design, or plant can be protected from infringement. The term of a patent isn't quite as important to consumers, although the expiration of a patent term can impact the cost of certain goods, especially in health care and pharmaceuticals. For a patent holder, the term represents the amount of time in which he or she can profit from the invention or design.
Reasons to Consider Not Using a Patent Term
If you don't want to pay the necessary maintenance fees to maintain the utility patent, the term will end earlier than what is mandated by patent laws. Maintenance fees are due at 3.5 years, 7.5 years, and 11.5 years following the issue date. You may pay the fees starting six months before the due date and up to six months after, but you will have to pay a surcharge if you pay within six months after the due date. Failing to pay the maintenance fee within the grace period (12 months) results in the patent term ending. Neither plant nor design patents require maintenance fees.
A patent term also would end if the patent was declared invalid by a judge, but there is no public announcement or information when this happens.
Reasons to Consider Using a Patent Term
Understanding your patent term can allow you to continue to protect your intellectual property as long as the patent is in effect. By paying the maintenance fees, your idea will be protected from infringement for up to 20 years.
Companies often look into patent terms to determine when they can begin producing similar products without infringing on the patent. In order to find out whether a patent is still within its term, you can search through the United States Patent and Trademark Office Patent Term Estimator spreadsheet.
If you have the utility patent number, you can save some time in your search. If not, you'll need the basic term of the patent, which is based on the date the application was filed. Those filed after June 8, 1995, would have the 20-year patent term, while those filed between June 7, 1978, and June 7, 1995, would typically have the 17-year patent term.
You can also search the USPTO's Patent Application Information Retrieval (PAIR) system to determine whether the maintenance fees have been paid on time. If you try to search for payment status on an expired patent, the system will give you an alert.
If you're searching for an original-issue utility patent or a reissue of a utility patent, and the patent number is 4,999,999 or less, you can end your search, as all patents that meet these criteria expired on or before August 31, 2010. Neither design patents, which have numbers starting with "Des" or "D," nor plant patents, which have numbers starting with "Re" would apply to this rule.
The deadline to file a patent application is 12 months from the time that you share your invention, idea, or design in a public setting. If you are not ready to file for a patent, you can submit a provisional patent application, which gives you another 12 months to file a nonprovisional patent. A provisional patent application does not automatically become a nonprovisional patent application; you must file a separate application within the 12-month period. If you don't file for the nonprovisional patent, you could lose the opportunity to do so in the future.
The USPTO also guarantees that a patent application will not be in pending status for more than three years. If your application exceeds the three-year processing period, you could be eligible for a patent term adjustment. The statute requires that the USPTO grant an extension of one day to the patent term for each day that the patent process is delayed, up to the maximum extension of five years. When calculating the patent term adjustment, the USPTO official will look at delays caused by the applicant and deduct those from the total number of days added to the patent term.
If the USPTO grants a patent term adjustment, it will only apply to the parent application, not any additional applications filed. In one example of the patent term extension, an inventor named Hossein Mohsenzadeh filed an application on July 6, 2001. He did not receive a notification for 14 months, which he responded to by pursuing additional patent protection in different categories. The original application was granted, and due to the delays, his patent received an addition of 2,104 days to the original term. But the additional patent protection in other categories was not eligible for the adjustment.
The January 2010 Wyeth decision created a new rule for all patents issued between August 2009 and March 2010. In this decision, it was determined that the USPTO had made mistakes in calculating patent term adjustments. Because of the errors, any patent issued prior to March 2, 2010 that was in pending status for over three years was eligible for an adjustment recalculation. The patent owner had to file an SB131 form with the USPTO within 180 days of the patent's issue date to be eligible.
Extensions were available only for patents issued between August 2009 and March 2, 2010. With the 180-day filing period, September 2, 2010 was the last day that a patent holder could apply for recalculation under the Wyeth decision. For those who did submit the application, the USPTO completed the recalculation. All patents that were calculated incorrectly were updated with the correct patent term adjustment.
What Could Happen When You Use a Patent Term?
The term of your patent dictates how long you own the rights to use, reproduce, and profit from the invention. When the term ends, you no longer have legal rights against anyone else who uses or copies your idea. It is important for inventors to use the full extent of the patent term to maximize profits on their ideas because when the term ends, the opportunity to do so will be over on that specific product or design.
What Could Happen When You Don't Use a Patent Term?
If you don't keep up with the requirements of your patent term, such as paying any required maintenance fees on a utility patent, the term will end and you will no longer have patent protection on your idea. But if you aren't able to maximize the term, due to regulations or reviews on your product by federal governmental agencies, you may be eligible to file for a term extension.
Another exception to the patent term standards is when an applicant must file a terminal disclaimer. The process of filing a terminal disclaimer shortens the patent term because it overlaps another patent, owned by the same applicant, that expires sooner. If your application requires a terminal disclaimer, the USPTO will inform you of the necessary steps.
Frequently Asked Questions
- How long is the patent term on a utility patent?
The standard patent term for a utility patent is 20 years. This changed from 17 years in June 1998. In certain cases, such as pharmaceuticals, medical procedures, medical equipment, and food products, the term may be eligible for an extension.
- How long is the patent term on a design patent?
The patent term for a design patent is 15 years. This changed from 14 years in 2015 and applies to all applications submitted after May 13, 2015.
- How long is the patent term on a plant patent?
The patent term on a plant patent is 20 years.
Steps to File
In order to file for a patent and begin the patent term, the applicant must fill out the appropriate application (design, utility, or plant patent), then file the application with the USPTO. The application must include any required images or drawings, with the necessary views, to be considered as a valid application. The application can be submitted online through the USPTO website.
Upon submission, the applicant will receive an application number, which can be used to indicate patent pending status.
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