How Long Does a Patent Last?

How Long Does a Patent Last? (In the United States)

Introduction

Understanding the duration of a patent is crucial for inventors, businesses, and anyone involved in innovation. Patents provide exclusive rights to the patent owner, allowing them to prevent others from using, selling, or making their patented invention. In this post, we’ll explore how long different types of patents last in the United States, what factors influence their duration, and how patent attorneys can help navigate the patent process.

Verna Law, P.C. is an intellectual properly law firm with a focus on patent law.  Call us at 914-908-6757 or send us e-mail at anthony@vernalaw.com if you have any questions.

 

The Different Types of Patents

The United States Patent system recognizes three main types of patents: utility patents, design patents, and plant patents. Each type of patent has a different term of a patent.

• Utility Patents: The most common type of patent, utility patents protect new and useful processes, machines, compositions of matter, and new inventions. A U.S. utility patent typically lasts 20 years from the filing date of the patent application.
• Design Patents: These patents protect the unique appearance of a product. A design patent lasts 15 years from the date of grant.
• Plant Patents: Plant patents are granted for new and distinct varieties of plants that are asexually reproduced. These patents also last for 20 years from the filing date of the patent application.

Patent Application Process and Key Dates

The patent application process involves several important dates that influence the duration of a patent:

• Filing Date: The date on which the patent application is filed with the patent office is crucial. The earliest filing date often determines the priority of the invention.
• Priority Date: This is the date used to assess the novelty of the invention, which can be earlier than the actual filing date if the applicant has filed related applications, such as a provisional application.
• Issue Date: The issue date is when the patent office officially grants the patent. For utility patents, this starts the clock on the 20-year term.

Extensions and Adjustments to Patent Terms

Several mechanisms can extend or adjust the term of a patent:

• Patent Term Extension (PTE): This is available for patents covering certain products, such as new drug applications or medical devices, that require lengthy regulatory approval processes. PTE can extend the patent term by up to five years.
• Patent Term Adjustment (PTA): Delays by the patent office during the examination process can result in a PTA, which adds extra days to the patent term.
• Terminal Disclaimer: Sometimes, a patent applicant may file a terminal disclaimer to shorten the term of a patent to align with a related earlier patent.

Key Points About Patent Term Extension:

1. Eligibility:

   • PTE is available for patents covering products subject to pre-market regulatory review, including drugs, medical devices, food additives, and certain animal drug products.
   • The patent must be in force, and the product must have received regulatory approval (e.g., FDA approval) before the PTE can be granted.

2. Extension Period:

   • The extension period is calculated based on the length of the regulatory review process, with certain deductions.
   • The maximum extension that can be granted is five years.
   • The total extended patent term cannot exceed 14 years from the date of product approval.

3. Application Process:

   • The patent holder must file an application for PTE with the United States Patent and Trademark Office (USPTO) within 60 days of the product’s regulatory approval.
   • The application must demonstrate the connection between the regulatory review and the patent, and provide details on the time spent in the regulatory review process.

4. Limitations:

   • Only one patent per product can be extended under the PTE provisions.
   • The extended term only covers the approved use of the product, not broader claims of the patent.

5. Legislation:

   • PTE is governed by the Drug Price Competition and Patent Term Restoration Act of 1984, commonly known as the Hatch-Waxman Act, which was designed to balance the need for pharmaceutical innovation with the availability of generic drugs.

Overall, Patent Term Extensions provide a crucial mechanism for patent holders in industries requiring lengthy regulatory approval processes, ensuring that they can maintain exclusivity for a reasonable period to recoup their investment in developing and bringing a product to market.

 

Key Points About Patent Term Adjustment:

1. Eligibility:

   • PTA applies to utility patents filed after June 8, 1995.
   • The adjustment is available when delays caused by the USPTO lead to a patent being issued later than it would have been under normal circumstances.

2. Types of Delays:

   • A-Delay: Delays for USPTO actions that take longer than the prescribed time limits, such as:
     • Failure to issue a first office action within 14 months from the filing date.
     • Failure to respond to an applicant’s reply within four months.
     • Failure to issue a patent within four months after the issue fee has been paid.
   • B-Delay: Delays due to the overall patent prosecution process exceeding three years from the filing date, excluding applicant-caused delays.
   • C-Delay: Delays due to interference proceedings, secrecy orders, or appeals.

3. Reduction of PTA:

   • The total PTA can be reduced if the applicant is responsible for any delays, such as taking an excessive amount of time to respond to USPTO communications.
   • The USPTO provides a calculated PTA when the patent is issued, but this calculation can be challenged by the applicant if they believe it is incorrect.

4. Calculation:

   • The PTA is the sum of the A-, B-, and C-Delays, minus any overlapping delays and any delays attributable to the applicant.
   • The USPTO issues a notice of the PTA calculation when the patent is granted, which the applicant can accept or appeal.

5. Application Process:

   • The USPTO automatically calculates the PTA and includes it in the Notice of Allowance for the patent.
   • If the applicant disagrees with the USPTO’s calculation, they can request reconsideration within a specified period, usually through a petition.

6. Impact:

   • PTA ensures that patent holders receive the full benefit of their patent rights, accounting for time lost due to USPTO delays, thus helping maintain a fair and effective term of exclusivity.

PTA is particularly important in industries where the timing of patent issuance can significantly impact the commercial lifespan of a product, such as pharmaceuticals and biotechnology. By adjusting the patent term to account for USPTO delays, PTA helps ensure that patent holders have sufficient time to commercially exploit their inventions.

 

Maintenance Fees and Their Impact

For a utility patent to remain in force, the patent holder must pay required maintenance fees at 3.5, 7.5, and 11.5 years after the patent is granted. Failure to pay these fees results in the expiration of the patent before the end of the standard 20-year term. The first maintenance fee is particularly important to keep the patent active.

 

Public Domain and Patent Expirations

Once a patent expires, the invention enters the public domain, meaning anyone can use the invention without permission from the former patent owner. The expiration date marks the end of the patent’s protection, and the invention is no longer covered by intellectual property rights.

 

Continuation Applications and Impact on Patent Duration

Inventors can file a continuation-in-part application (CIP) to add new subject matter to a pending patent application. While a CIP can provide protection for subsequent developments, it also has its own expiration date based on the earlier filed application.

 

Legal Implications of Patent Expiration

After a patent expires, patent infringement actions are no longer possible. However, if a third party engages in illegal actions such as infringement before the patent expires, the patent owner may still pursue legal remedies in federal court.

 

Strategic Considerations for Patent Holders

Understanding the life of your patent and planning for its expiration are critical for maintaining a competitive edge. Innovation leaders and R&D managers should assess the value of their patents and consider strategies such as licensing or pursuing new patents to extend their protection products.

 

Conclusion

The duration of a patent is influenced by various factors, including the type of patent, the patent application process, and whether required maintenance fees are paid. Working with experienced patent attorneys is essential to navigate the complexities of patent law and ensure that your patent rights are fully protected throughout the life of your patent. For more detailed legal advice and to understand how to make the most of your intellectual property rights, contact a law firm specializing in patents.

 

Verna Law, P.C. is an intellectual properly law firm with a focus on patent law.  Call us at 914-908-6757 or send us e-mail at anthony@vernalaw.com if you have any questions.

 

 

Case Summary: AstraZeneca AB v. Impax Laboratories, Inc.

Court: United States District Court, Southern District of New York
Date: May 25, 2007
Citation: 490 F. Supp. 2d 368

Background:

AstraZeneca AB, the plaintiff, held patents covering extended-release formulations of the drug omeprazole, marketed under the brand name Prilosec. These patents included U.S. Patent Nos. 4,786,505 and 4,853,230 (the ‘505 and ‘230 patents). Impax Laboratories, Inc., the defendant, sought to market a generic version of Prilosec and filed an Abbreviated New Drug Application (ANDA) with the FDA, challenging the validity and enforceability of AstraZeneca’s patents.

Patent Expiration Issue:

A central issue in the case was the expiration of AstraZeneca’s ‘505 and ‘230 patents. The expiration dates were critical because they determined when Impax could lawfully market its generic version of Prilosec. The ‘505 patent was set to expire on April 20, 2007, while the ‘230 patent was set to expire on May 20, 2007.

Impax argued that AstraZeneca’s attempts to enforce its patents against Impax’s generic drug, after the expiration dates, were improper. AstraZeneca had attempted to extend the enforcement of its patents through various legal strategies, including arguing for additional market exclusivity based on regulatory protections and asserting that Impax’s product still infringed despite the patent expiration.

Court’s Analysis and Decision:

The court examined the relevant patent expiration dates and the legal implications of those expirations. It noted that once a patent expires, the patent holder no longer has exclusive rights to prevent others from making, using, or selling the patented invention. The court rejected AstraZeneca’s arguments for extending its exclusivity beyond the patent expiration dates.

The court ultimately ruled in favor of Impax, allowing the company to proceed with the marketing of its generic version of Prilosec. The decision emphasized that AstraZeneca’s patents could not be enforced beyond their expiration dates, and any attempt to do so would be contrary to the principles of patent law.

Key Takeaway:

The AstraZeneca AB v. Impax Laboratories, Inc. case underscores the importance of patent expiration dates in determining the enforceability of patent rights. Once a patent expires, the patentee’s exclusive rights cease, and the public is free to use the previously patented invention without fear of infringement. This case is a clear example of the court’s unwillingness to allow patent holders to extend their exclusivity beyond the legally established expiration dates.

 

Case Summary: Kewazinga Corporation v. Google LLC

Court: United States District Court, Southern District of New York
Date: September 28, 2023
Citation: 2023 WL 6319572

Background:

Kewazinga Corporation filed a lawsuit against Google LLC, alleging that Google’s “Street View” feature infringed on Kewazinga’s patents related to image-based navigation technology. The patents in question were U.S. Patent Nos. 6,522,325, 6,535,226, and 7,058,204 (the ‘325, ‘226, and ‘204 patents).

The core issue in this case revolved around whether Google’s continued use of the technology after the patents expired constituted infringement, and what the implications of patent expiration were for ongoing and future use of the patented technology.

Patent Expiration Issue:

Kewazinga’s patents had expiration dates that played a significant role in the court’s analysis. The ‘325 patent expired on December 31, 2019, while the ‘226 and ‘204 patents expired on June 12, 2020.

Google argued that any claims related to actions occurring after the expiration of these patents should be dismissed because, after a patent expires, the patentee no longer holds exclusive rights to prevent others from making, using, or selling the patented invention. Kewazinga, however, sought damages for Google’s alleged infringement that occurred before the patents expired and potentially sought ongoing royalties or damages related to the use of the technology.

Court’s Analysis and Decision:

The court acknowledged the clear legal principle that a patent holder’s rights terminate upon the expiration of the patent. Post-expiration, the public is free to use the invention that was previously protected by the patent without risk of infringement. The court dismissed any claims related to infringement after the patents’ expiration dates, reaffirming that Kewazinga could not seek damages or other remedies for Google’s use of the technology after the patents had expired.

However, the court allowed Kewazinga to pursue claims for damages related to Google’s alleged infringement that occurred before the patents expired. The court emphasized that while post-expiration use is not actionable, pre-expiration infringement could still result in damages if proven.

Key Takeaway:

The Kewazinga Corporation v. Google LLC case highlights the significance of patent expiration dates in intellectual property litigation. Once a patent expires, the patent holder loses the exclusive rights associated with the patent, and any claims of infringement must be limited to actions that occurred before the expiration date. This case reaffirms the legal principle that patent rights do not extend beyond the expiration date, and any attempts to enforce expired patents will be dismissed.

 

 

Verna Law, P.C. is an intellectual properly law firm with a focus on patent law.  Call us at 914-908-6757 or send us e-mail at anthony@vernalaw.com if you have any questions.