December 11, 2020

Patent FAQ: Patent Renewals, Expirations, Coverage, Tax Benefits, and More

Can patents be renewed?

U.S. patents issue for fixed terms and generally cannot be renewed.

  • A U.S. utility patent has a term of 20 years from its earliest effective, non-provisional U.S. filing date. The term may be extended by the USPTO for Patent Office delays in examining the application, and for certain delays in the FDA regulatory process. Conversely, the term can also be shortened if the applicant uses certain disclaimers during prosecution.
  • Maintenance fees must be paid at 3 ½, 7 ½, and 11 ½ years after issuance of a utility patent, or the patent will expire at 4, 8, or 12 years.
  • A U.S. design patent has a term of 15 years from issuance.
  • A U.S. plant patent has a term of 20 years from issuance.

Without a change in the law, a patent cannot be extended beyond the term for which it issued. The only way to extend protection is to invent and patent an improvement to the originally patented invention. A new patent will only protect the improvement, however, and not the original invention, which others will be free to copy and use when the original patent expires.

Are patent expenses tax deductible?

While legal expenses are generally tax deductible for businesses, the cost of obtaining a patent is usually treated as a capital expense that is depreciated over the useful life of the patent. The business should also consider whether a Research and Development tax credit is available and helpful to the business’ tax situation. The revenue an inventor receives from licensing or selling a patent is sometimes entitled to favorable tax treatment (capital gains vs. ordinary income). Applicants should obtain advice for their specific situation from a tax professional.

Can you patent an invention worldwide?

The good news is that virtually every country in the world provides some form of patent protection. Unfortunately, though, there is no single patent document or issuing body with the authority to protect a patent around the entire world. For worldwide coverage, one must obtain protection on a country-by-country basis. Regional patents are also available in Europe, Eurasia, Africa, and the Middle East. Fair warning: obtaining and maintaining a patent in every country of the world would be prohibitively expensive. Even the best-funded patent applicants need to focus their efforts and resources where protection is needed.

For U.S. applicants interested in protecting their patents outside of the U.S., they should keep the invention secret until they file a U.S. application, and then file any corresponding foreign applications within one year of the U.S. filing date. In most countries, depending on certain international treaties, these applications will be able to use the U.S. filing date. Applicants can file an international preliminary patent application, called a PCT application, which delays, but does not eliminate, the need to file applications in individual countries and regions.

Can patents be sold?

Yes, patents are personal property that can be sold, rented (licensed), mortgaged, gifted, or willed in whole or in part. Transfers should be in writing, and should be recorded with the U.S. Patent and Trademark Office.

When a patent is co-owned, each co-owner (no matter how small the share) can practice the patented invention and authorize others to do so, without the permission of and without accounting to any of the other co-owners. Thus, before creating a situation where there are co-owners, the prospective co-owners should agree about sharing the costs and benefits of the co-owned patent.

How do you patent an idea?

You actually cannot patent an idea, but you can patent a product, machine, a composition, or a process based on the idea. There are numerous deadlines and requirements, but the applicant should file a patent application as soon as possible, and preferably before any public disclosure of the invention.

How does a patent work?

Once you patent an invention, you have the right to stop others from making, using, selling, offering for sale, or importing the patented invention. If you believe that someone is infringing your patent, you can send them a cease and desist letter, demanding that they stop. If they do not stop, you have the right to sue them in Federal Court. If you prove that your patent is infringed, the court can award you damages for the infringement, and will usually issue a court order for the infringer to stop. If the infringer acted willfully or the circumstances are otherwise exceptional, then the court can award up to three times the actual damage award and award you your attorneys’ fees.

How are patents granted?

The grant of a patent begins with filing a patent application with an issuing authority, such as the USPTO. The application is assigned to an examiner, who examines the application, conducts a search, and determines whether the invention in the application meets the requirements of patentability. In the U.S., this involves determining whether the invention is novel (new or different from the prior art), non-obviousness (not an obvious variation of the prior art), and has a level of utility or usefulness.

If the examiner determines that the invention is not patentable, the applicant is usually given an opportunity to respond. The exchange between the applicant and the examiner (called the prosecution of the application) continues until the examiner makes a final determination. If the applicant is dissatisfied with the result, the applicant can usually appeal the examiner’s decision with an internal board in the Patent Office, and ultimately to the courts.

Once the application is allowed, the applicant pays the issue fee, and a few months later the patent will issue. The process takes an average of 25 months, although the time varies depending upon the examiner and the subject matter. There are some procedures available to speed up the process.

How do you patent a product?

The process of patenting a product begins with the preparation and filing of a patent application. A patent application is a very complicated and difficult document to prepare, and applicants are best served by getting help from a patent attorney. The patent attorney prepares the application based upon the inventor’s disclosure, arranges for the necessary drawings, and electronically files the patent application with the U.S. Patent and Trademark Office. The patent attorney monitors the application and prosecutes the application (argues with the patent office) to obtain allowance of at least one patent claim, so that a patent will issue. It typically takes two to four weeks to prepare the application. The patent application process takes about 25 months on average, although the time varies depending on the examiner and the subject matter. There are some procedures available to speed up the process.

How do you patent a name?

The short answer is you cannot patent a name, but you can protect it with a trademark. Trademark rights are acquired wherever you use a name. To enjoy the strongest protection, though, the name should be registered as a trademark at the state or federal level. Federal registration is preferred because it confers nationwide protection as well as a number of other benefits, including:

  • Proof of ownership and exclusive right to use
  • Constructive Notice, reserving the mark throughout the country, effective on the filing of the application
  • The right to have U.S. Customs exclude infringing products
  • The right to use the ® symbol
  • Registration of the mark makes it easier for others to find, reducing the risk that others will accidentally use your mark

Whether you have an unregistered or registered trademark, if someone uses a mark that is so similar to your mark that consumers are likely to be confused, you can bring an infringement suit. If you prove infringement, the court will award damages, and likely issue an order forbidding further use of the infringing mark.

What do patent attorneys do?

Patent attorneys conduct patentability searches on clients’ new inventions. They prepare, file, and prosecute applications on those new inventions. Prosecuting a patent generally means advocating for the best protection possible with the patent office. Once a patent issues, patent attorneys can help clients license the patent. If someone infringes the patent, patent attorneys enforce the patent in court.

Patent attorneys also conduct clearance studies on clients’ new products to make sure they do not infringe another business’s existing patent. If a client is sued for infringement, patent attorneys defend their clients, trying to prove that the patent is in not infringed or is invalid.

What does patent pending mean?

“Patent pending” on a product means that a patent application has been filed on the product. There is no requirement that a patent applicant needs to mark the product as “patent pending,” but most do so to signal to customers that there is something innovative about the product and to warn competitors not to copy the product because a patent could issue at any moment. Only products that have a corresponding pending application should be marked “patent pending” — falsely marking a product could result in liability to anyone who is harmed by the false marking.

What do patents protect?

There are three types of U.S. patents: utility patents, design patents, and plant patents. Utility patents protect four broad classes of subject matter: products, machines, compositions of matter, and processes. They also protect the way the invention is constructed or how it works. Design patents protect the aesthetic appearance of a product or a part of a product. Virtually any product or portion of a product can be the subject of a design patent. Plant patents protect asexually reproduced plants.

When can patents be revoked?

A patent can be revoked before it expires under three general circumstances. First, if the patent owner or a third party initiates a reexamination of the patent, and the patent office determines that the invention is not patentable. Second, if it is successfully challenged in a Post Grant Review proceeding or an Inter Partes Review proceeding brought by a third party, or in a lawsuit brought by a third party in Federal Court. Finally, a utility patent can be revoked if the patent owner fails to pay maintenance fees at 3 ½, 7 ½, and 11 ½ years after the patent issues.

When do patents expire?

There are three kinds of U.S. patents: utility patents, design patents, and plant patents. A utility patent typically expires 20 years from its earliest effective non-provisional U.S. filing date. Sometimes, the patent office extends the term because of patent office delays in processing the application, or because of FDA delays in approving the patented product. Sometimes the patent applicant may disclaim some or all of the term. A utility patent can also expire at 4, 8, or 12 years from issuance if the owner does not pay the necessary maintenance fees at 3 ½, 7 ½, and 11 ½ years.

A design patent has a term of 15 years from its issue date, and a plant patent has a term of 20 years from its earliest effective filing date. There are no maintenance fees for design patents or plant patents.