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Written by : Candelaria Datu |
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100 you've reached the finish line and you've got your patent granted Congrats now how long is it good for when do they expire well did you know that patents once they're awarded can protect you for 20 years and design patents for 15 but did you know that you could make them last even longer with building a patent portfolio with continuation patent applications yes longer than 20 years hello everyone my name is JB Hooven ER USPTO patent attorney and I'm the managing partner at CEO at bold patents law firm today I'll be talking about how long patent rights last when they expire and how to extend the life of your patent with a little secret of mine with continuations so today I'll be sharing with you and helping you understand how long patents are good for and if you stick around to the end I'll be sharing that secret of how to extend patents beyond that 20 years in the details below you'll see a description of a bit of a timeline to jump forward in the video to a certain spot that you want to move toward so first up utility patents what is a utility patent let's talk about that really quick all right utility patents generate productivity these are inventions that give you value right functional benefit right if you think about you know the iPhone okay it's got utility in terms of its helping you be more efficient it's helping us conduct business or talk to people around the world using a cellular device that's in a certain form and function it's giving you benefits huge benefits and utility on the other side a design just protects what it looks like just the ornamentation the aesthetic appeal of that invention not what it does okay and for most valuable inventions you need both let's go back to the iPhone which I love coming back to the shape the fact that it has a button position at the bottom right that's a design of the overall phone that's a separate protection then the utility patent that reside in what it does right the buttons you push apps all the functionality of the system the design is the actual three-dimensional product that you're holding that's the difference so let's go back to utility patents okay so the functional benefit okay let's think about those patents they are awarded with 20 years of monopoly right monopoly is a powerful word but it's true going way back to the Constitution article 1 section 8 Clause 8 says that for inventors that have new and useful inventions the government will give you 20 years of limited protection which meaning the government will go to bat for you and help you in federal court make sure that you are the only one able to make use sell or import your invention in the US of A alright that's a big deal so back in the Constitution those founding fathers thought it was that important to be able to get people's attention right to incentivize inventors to get come out of the Woodworks and share their brains with the rest of us that's the whole system that's why utility tons are given that extra five years because we think that there needs to be that full explanation that bigger reward for telling us how you built it right how we're supposed to make this invention design patents don't get a little don't get too much less than 15 years is a good chunk of time don't get me wrong but those are just more limited right the actual disclosure in a design patent it's just a drawing right it's just the drawing it's a very simple clause it says I claim the drawings as shown below that's truly all the design patents say in words it's all about the drawings now you ask how long did they last as I said utility is 20 years design is 15 years but for interesting cases right for those inventors and business owners that are looking to get beyond that 20 year mark there are some secrets okay the first secret I'll share with you is that in utility filings and even design filings there are certain parts of the invention right this whole invention about how it's going to market that are kept as trade secrets a classic example is a company an aerospace company that manufactures air Planes okay huge monolithic wings that are made of carbon fiber and they're assembled using complex tools and equipment and processes that are patented you bet right how to how to create that curvature how to add those layers in but they don't tell you for example how long to heat it or at what radius or at what degree specifically you heat it right there's just enough that's disclosed in that patent but trade secret just kept within the company now there is the second way this is a major way to get additional time for your invention is to file a continuation application when your parent what's called a parent application is filed you have until that parent gets issued the opportunity to file a continuation or what's called a continuation in part ok contusion part is when you've got a bell or a whistle or new improvement to your core patent invention and you want to try to protect that improvement that is a wonderful opportunity to file that continuation that'll take on a life of its own and you guessed it a term of its own and it will go beyond that twenty years when the parent expires the child patent will continue on and get you additional protection for your overall invention so for more about continuations please read our blog article click the link below to get your free book on bold ideas the inventors guide to patents and schedule a free 30-minute consult if you're ready to move forward at bold IP com thanks a lot and have a great day
Thanks for your comment Albert Buhl, have a nice day.
- Candelaria Datu, Staff Member
hello everyone in this video we'll look at patent expiration dates we'll start with the general rules of when patents expire but mainly we'll be looking at the calculated patent expiration dates feature in the ifi claims database we'll see how that information is displayed in ifi records and the ways to search it we'll look at the calculated expiration date in a typical record and then we'll turn to the several kinds of exceptional situations where a patent term might be either shortened or extended and how that information is displayed and searched in ifi so let's get started the rule of thumb is that patent protection expires 20 years after the application was filed that's the law in most countries and has been the rule in the united states since 1978. there are some exceptions which we'll talk about but let's begin with a typical case we're looking at the legal status section of a u.s patent record in ifi claims and you see where it says that the calculated expiration date is september 25th 2039 this calculated expiration date is simply the application date plus 20 years if we go to the bibliographic tab for a moment you see the application date is september 25 2019. and the calculated expiration date can be searched in ifi using the expiration date or expd field the options for the search format are much like with any other date field in dialogue you can search for an exact date like this or for a whole year or select both a year and a month you can look for a range by using a hyphen in between two date values you can use the greater than symbol to look for expiration dates after any date or year or use the less than symbol to look for expirations before a certain date or year the expd search can be run alone or in combination with other searches such as a patent assignee search here we're looking for any microsoft patents that are calculated to expire in 2021 or 2022 you might do this kind of search for competitive intelligence for example or for your own company as a way to track which of your important patents are coming up on an expiration date or you can limit a term search by calculated expiration date as we see here the use case for this would be what's called a freedom to operate search where you're interested in using a certain type of technology and you want to know if it's currently under patent protection or when the relevant patents are due to expire so the calculated expiration date search is very flexible and it's easy to do in ifi claims and most of the time it's just a very straightforward calculation from the application date but there are several reasons why a patent's life span might be made either shorter or longer than the norm the most common reason by far for a patent to expire on some date other than the 20th anniversary of the application is if the patent owner fails to pay the required maintenance fees these fees are payable three years after the patent is issued then again seven years and again 11 years after issue there's a six-month payment window then a six-month grace period and if the fee is not paid the patent office will market expired and when that happens the ifi record will show it like this the patent status entry says expired fee related but notice this does not affect the calculated expiration date entry which in this case remains searchable in the record as march 12 2028 20 years after the application so if your goal is determining which patents are active and which are not you wouldn't use the calculated expiration date search alone that's not its purpose for more on using the patent status indicators in ifi i would encourage you to check out the separate video on that and i'll put a link down in the description there are two different ways in title 35 of the us code for a patent owner to seek an extension or adjustment of the expiration date beyond the normal 20 years the first would be a patent term adjustment under section 154 if the patent office has not yet issued a patent within three years after the application was filed then depending on the reasons and other factors the patent owner can apply for an adjustment to give the patent a later expiration date if that request is granted then the record in ifi reflects it in the way that you see here note that the original calculated expiration date of september 14 2035 is still searchable in the expd field and so is the adjusted expiration date of april 5 2036 so both dates are kept in the record for search purposes a patent term extension under section 156 is something different this has to do only with pharmaceuticals it's part of what's known as the hatch waxman act and this section lets the owner of a pharma patent apply for a longer period of patent protection based on delays that may have occurred not at the patent office but in the process of testing and approval by the fda the idea is that an extension gives the drug company a longer opportunity to recoup the expenses involved in the long process of developing the drug and getting it approved the calculation method is complicated but the patent office can grant an extension of up to five years often it's shorter and if an extension is granted this is what it looks like in an ifi record for search purposes again as in a section 154 term adjustment the original calculated expiration date is still searchable but the extended expiration date is indexed as well so either date could determine the limits of your search results this record for example would be retrieved if you searched for records with an expiration date before the end of 2006 but when you looked at the record you'd see that it was extended into 2007 by the same token if you search for records with an expiration date during 2007 you would again get this record but you could see that originally it was going to expire in 2006 before it was extended into 2007. this way the expd search is more inclusive and it's easy to tell from the record how the expiration date has changed a terminal disclaimer is a type of limit on the duration of a patent it's used for example when a patent owner wants to get an additional patent on an improved version of something it is patented already but because the patents are similar they need to overcome a rejection based on double patenting so if a patent is subject to a terminal disclaimer it means that this patent will expire on the same date as another usually older patent held by the same owner this can get complicated so the ifi record does not try to calculate the possible effect of a terminal disclaimer instead the record just shows the normally calculated expiration date but it flags the presence of a terminal disclaimer so that you can investigate further as needed the existence of a terminal disclaimer is also noted on the face of the original patent as we see here so that's it this video by the way is the last of a three-part series on search enhancements found in the database ifi claims the first one was on ifi's probable assignee feature as a way to find patent applications that would otherwise remain hidden from assignee searches the second was on the patent status feature in ifi
Thanks Gerald your participation is very much appreciated
- Candelaria Datu
About the author
I've studied kinesiology / exercise physiology / performance science at Castleton University in Castleton and I am an expert in foreign policy. I usually feel amused. My previous job was directory assistance operator I held this position for 3 years, I love talking about poetry and face slapping. Huge fan of Taylor Mills I practice gaelic games and collect football cards.
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