HOME

OVERVIEW

PATENTS

TRADEMARKS

COPYRIGHTS

Staff Directory

About our Firm

Contact Us

Brown & Michaels

How do I figure out if a patent is still in force? 

A patent may be enforced starting on the date it is issued by the USPTO (its "Issue Date"), and running for the length of its term, unless it expires earlier due to a failure to pay fees or a declaration of invalidity by a court. After the patent expires, the invention is available to all.

To determine if a patent is still in force, you will need access to the USPTO's website, and specifically to the patent image database, which requires installation of TIFF-viewing software. See the USPTO website for instructions on viewing patent images. 

Call up the patent on the USPTO patent database, if you do not have a printed copy. If you need help reading the patent, see our "How to read the first page of a patent" page. 

Utility Patents and Plant Patents based on applications filed after June 8, 1995, (actual filing date, not priority date), have a term of 20 years from the US filing date* of the earliest non-provisional application** upon which the patent is based. For more details on how this calculation works, see our page on "Patent Timeline".

Utility Patents and Plant Patents based on applications which were pending on June 8, 1995 (actual filing date, not priority date), and any Utility or Plant Patent which was issued and not expired as of June 8, 1995, have a term measured by the longer of 17 years from the date of issue or 20 years from the date of US filing* of the earliest non-provisional** application in its chain of parentage.

*= By "US filing date" we mean, if the US application claims priority from an earlier-filed foreign application (that is, it gets the benefit of a filing date in a foreign patent office for purposes of determining what is "prior art"), it is the actual filing date of the first application in the USPTO which starts the 20-year term, not the filing date of the foreign application. 

**=By "non-provisional" we mean, well, not provisional. In other words, if the patent claims the benefit of the filing date of a provisional application, that filing date does not start the term running. You look at the actual filing date of the utility patent application to determine patent term. However , if the patent was a continuation, continuation-in-part or divisional of an earlier "regular" patent application, it is the filing date of the first filed earlier patent application which is used to compute patent term. 

Utility and Plant Patents issued before June 7, 1978 had a 17-year term, measured from the date of issue, and have all expired. 

Design Patents are valid for a period of 14 years from the date of issue. 

Some patents have less than the usual life span because their terms are limited to the terms of earlier-issued patents. This is called a "terminal disclaimer", and is a result of filing two applications which claimed essentially the same invention.  Terminal disclaimers will be marked on the later-issued patent. Sometimes these are flagged by an asterisk after the patent issue date, but sometimes they only appear in the text of the patent or with the "related application" data on the face of the patent. 

Normally, for patents which come under the 20-year-from-filing term, this will have little practical effect if the patent with a terminal disclaimer is based on the same parent as the first application - for example, if it is a continuation, continuation in part or divisional of the earlier patent (this will nearly always be the case). However, if a terminal disclaimer is filed, and the earlier patent expires early, so will the patent subject to the disclaimer. 

3. Was the basic term extended?

Special Cases: Some patents have had their terms extended based on extreme delays in government approvals outside the Patent Office. This is very unusual, and applies almost always to pharmaceuticals (for example, Claritin® or Prozac®), food products (Aspartame) or medical devices or procedures, where FDA approval can sometimes eat up most of the patent term before the drug can be brought to market. For a list, see the Patent and Trademark Office's Extended Term List 

Effect of Terminal Disclaimers on term extensions: 

Extensions for FDA approval - term is extended past disclaimer date: In the Merck v. HI-TECH case, decided in March 2007, the Court of Appeals for the Federal Circuit held that if a patent is subject to a terminal disclaimer, the term extensions for regulatory review granted by section 156 of the Patent Law (35 USC 156) are added on after the terminal disclaimer date.  

Extensions for USPTO delays - term is not extended past disclaimer date:  term extensions due to USPTO delay are governed by section 154 (35 USC 154(b)) - that section specifically says that extensions for USPTO delay cannot extend patent term beyond the date set by a terminal disclaimer.

4. Was there any reexamination or voluntary disclaimer which resulted in a loss of some or all of the claims? 

This would be noted on a certificate attached to the patent image on the USPTO database, usually as the last page in the image file. 

On rare occasions, issued patents are withdrawn from issue on the order of the Commissioner of Patents. In these cases, the patents are usually not available on the USPTO database (but sometimes they are on other databases, such as the EPO's Espacenet or the commercial Delphion system). 

5. Have the required maintenance fees been paid? 

Utility Patents: There are maintenance fees due at 3.5 years, 7.5 years and 11.5 years from the date of issue. The "payment window" opens six months before the due date (earlier payments are not accepted), and closes one year later (that is, 4, 8 or 12 years after issue). If the fee is paid during the "grace period" of six months after the due date, a surcharge is added. If the maintenance fees are not paid before the window closes, the patent expires as of the end of the grace period. 

You can use the USPTO's Patent Application Information Retrieval (PAIR) system to determine if maintenance fees have been paid. Enter the patent number on the first screen (you will need to use the pull-down menu to change "Application Number" to "Patent Number", or enter the application number, if you know it). On the next screen, click on the "fees" tab. Click on "Maintenance Fees - Retrieve Fees to Pay", and you will see a screen like this:

Look at the "Window Opens" and "Window Closes" lines. In this example, the seven and a half year maintenance fee is due between February 24, 2005, and February 24, 2006 (with a surcharge due if the fee is paid after August 25, 2005). Since both these dates are in the future (as this is being written in the fall of 2004), the patent is still current (also note the line at the bottom of the screen which says, "Currently there are no fees due."). If the maintenance fee is not paid, the patent will expire on the "Window Close" date. 

As it happens, the maintenance fees on this example patent were not paid, and the patent expired in August, 2005. If you look the patent up today, instead of the payment window display the PAIR system will give an error message saying "*ERROR: There is no statement available for the selected payment year because the Patent has expired."

You can also click on the "Maintenance Statement" selections to confirm that a fee was paid, and how much it was. 

In December, 2004, the PAIR system was enhanced to note a status of "Patent Expired Due to Non-Payment of Maintenance Fees Under 37 CFR 1.362" for patents which have expired for that reason. It appears that this only affects patents which expired after the date the enhancement went into effect. Obviously, if the status has this note, then the patent is expired. If it does not, you still need to follow the process above to check if maintenance fees were, in fact, paid. 

Note: Patents based on applications filed before December, 1980 (actual filing date, not priority date), were not subject to the payment of maintenance fees. Most of these patents have long since expired at the ends of their terms, so this exception will seldom arise. 

But be careful  - even if it's expired, the patent might still be revived: Expired patents may be revived, so long as the delay in paying the fee was unavoidable or unintentional. An application to revive a patent based on unintentional delay must be filed within two years of the end of the grace period. There is no such limitation on "unavoidable" delay, but the USPTO is very strict on what constitutes "unavoidable delay", and such petitions are seldom granted. So, while not absolutely 100% certain, it is fairly safe to assume that if the expiration date was more than two years in the past, the patent cannot be revived except under very exceptional circumstances. For information on reviving expired patents, see MPEP 2590.

Plant or Design Patents: No maintenance fees are due on Plant or Design patents. 

6. Has the patent been declared invalid by a court?

If a patent is declared invalid by a court, it becomes unenforceable. Unfortunately, there's no certain way to know this. 

One possible resource is the PatentFizz website - sometimes information about a court case invalidating a patent may be added to their patent database. Also, if you have access to the Lexis or Westlaw or BNA USPQ databases (all available only for substantial monthly fees, unfortunately), you can try looking up the patent number in their databases of reported court cases to see if the patent might have been mentioned in a case report. 

If you are concerned about a patent, it may be advisable to have a patent attorney (for example, one of the attorneys at Brown and Michaels) do a validity study and opinion on the patent. The attorney will do a search to find prior art which might invalidate the patent, and will review the patent's file at the USPTO to see if there is anything which might affect the validity or scope of the patent. Feel free to contact Brown and Michaels if you think you might need this service. 

Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process. 

Back to the "How do I..." main page

Home || Intellectual Property || Patents || Trademarks || Copyrights

Brown & Michaels, PC

e-mail: bpm@bpmlegal.com

400 M & T Bank Building
118 North Tioga Street - The Commons
Ithaca, NY 14850
Phone: (607) 256-2000 - Fax: (607) 256-3628