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How do I figure out if a US 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 - preferably, to the patent image database, which requires installation of TIFF-viewing software. See the USPTO website for instructions on viewing patent images. You can find most of the information in the text-based display, but it's easier to look at the patent image. You can also look the patent up in the European Patent Office's espacenet system or in Google Patents, and retrieve the images in PDF form.
Note: The USPTO has come up with a Patent Term Estimator spreadsheet. It's in beta-test form as of February 2013. The program allows you to estimate patent term by filling in information in a Microsoft Excel spreadsheet - you can download it from the USPTO website.
To determine if a patent is still in force yourself, follow these steps:
0. Shortcut: Utility Patents with numbers under 5,000,000
If the patent is an original-issue Utility Patent (not a Design Patent (number starts with "D" or "Des") or a Plant Patent (number starts with "P" or "Plt") or a Reissue of a Utility Patent (number starts with Re)) and the patent number is 4,999,999 or less - stop here. All such patents expired on or before August 31, 2010. If this doesn't apply, you will have to work through the procedure below.
1. Start with the Basic Patent Term
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 on or after June 7, 1978 and had not expired before 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.
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.
2. Is the term of this patent tied to the term of another patent?
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. In rare instances, there will just be a note printed on the patent which says, "This patent is subject to a terminal disclaimer", but there is nothing on the printed patent indicating which earlier patent the term is linked to.
In most cases, you will need to go to the USPTO Public PAIR system and try to find the terminal disclaimer itself in the Image File Wrapper, if there is one. If the patent is too old to have an Image File Wrapper, you can look on the "Continuity" tab in PAIR or at the list of related applications on the patent itself - if there's only one prior patent in the chain, the terminal disclaimer nearly always refers to that patent. Call up that patent, and go through this whole procedure for it, and you will find out the common expiration date for both patents.
Once you know what patent the terminal disclaimer was based on, you need to consider what the terminal disclaimer said was the point at which the term was disclaimed?
Normally, for patents filed after June 1995 which have a 20-year-from-filing term, and where the patent with the disclaimer is a "child" of the base patent - for example, if it is a continuation, continuation in part or divisional of the earlier patent (this will nearly always be the case) - a terminal disclaimer will have little practical effect. The two patents would have had the same basic expiration date, anyway.
Note that a terminal disclaimer ties the term of a later-issued patent to the normal term of the earlier-issued patent. An earlier-than-normal expiration of the first patent, for example because the owner failed to pay the maintenance fees, does not affect the term of the patent subject to the disclaimer. This was affirmed in a 2011 district court case, Hoffman-La Roche Inc. v. Orchid Chems. & Pharms. Ltd. (D-NJ 2011), and by the Federal Circuit in the Pharmacia v. Par Pharmaceutical case (CAFC 2005)
3. Was the basic term extended?Patents based on applications filed on or after May 29, 2000 (actual filing date, not priority date), might have had their terms extended for Patent Office delays beyond certain limits. Such extensions, called "patent term adjustments", are automatically given when the patent is issued, and they are usually marked on the face of the patent, flagged with "(*)". For example, see patent 7,613,700 - "(*) Subject to any disclaimer, the term of this patent is extended or adjusted under 35 USC 154(b) by 291 days." These adjustments are calculated mathematically based on a formula which takes into account when each office action was sent by the USPTO as compared with a standard for such actions, and subtracts any delays caused by the applicant's delay, and so on.
Special rule for patents issued between August 2009 and March 2010: The January 2010 Wyeth decision held that the USPTO had been calculating these adjustments incorrectly in some cases. Based on this decision, the USPTO announced in January 2010 that patents issued before March 2, 2010, which were pending for more than three years could have their adjustments recalculated if the patentee filed an SB131 form within 180 days of the issue date of the patent - effectively, then, this meant that extensions were available for patents issued after August 2009 and before March 2, 2010, and the last date anyone could file for a Wyeth adjustment would have been September 2, 2010. Not everyone who was eligible for extension applied for it. For those who did apply, and if the USPTO recalculated and discovered an error had been made, the patent term adjustment printed on the face of the patent would not be correct. However, any affected patent should be new enough to have the Wyeth request form available in the USPTO's Public PAIR system.
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 product can be brought to market. It is also theoretically possible that a patent could have its term extended by Congress by the passage of a Private Law applying only to that patent - we say "theoretically" because this has not happened since the late 1980's, no current patents are subject to such extension, and the procedure was essentially rendered obsolete by the passage of 35 USC sections 155 and 156, which provide for the extensions noted above.
For a list of patents extended under sections 155 or 156 or by private law, see the Patent and Trademark Office's Extended Term List
Effect of Terminal Disclaimers (see section 2 above) on term extensions:
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 (that is, 3, 7 or 11 years after issue - 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 ("Surcharge 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 before the "Window Close" date, the patent will expire as of the "Surcharge Date".
As it happened, 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 because of non-payment of maintenance fees, the patent might still be revived: Patents which expired due to nonpayment 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.
Just to be completely clear, the last paragraph only applies to expiration due to nonpayment of maintenance fees - patents which expired at the end of their term cannot be revived.
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 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. The InventBlog has a post explaining how you can use the Lexis Pay-as-You-Go system to check a patent (for a fee, of course). Once you have a case citation you can look up the case in the Public Access to Court Electronic Records (PACER) system.
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.
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