If you are familiar with patents, then you may be aware that patent-holders can have their patents expire before the overall length of the patent term has come up. This is because they have not paid their maintenance fees. When a patent-holder lets a patent expire, it is then set to go into public domain, meaning that there are no legal protections remaining for anyone who chooses to utilize this patent for their own good.
Read more below about how you could possibly take over an expired patent, and contact The Patent Professor today if you need assistance with any sort of patent acquisition projects. The ability to take over an expired patent is fairly limited in scope, but there are some opportunities to do so. To avoid having your own patent expire, make sure that you fully understand what must be done in order to maintain your patents with the United States Patent and Trademark Office (USPTO). Failure to keep up with these duties will result in your intellectual property being turned over to the public domain, meaning that you will have no legal recourse for any instances of reproduction.
How Does a Patent Expire?
When someone secures a patent for their intellectual property, they must pay maintenance fees within a certain period of time in order to avoid any surcharges or possible lapses in legal coverage. It’s important that when you submit a patent to understand what your maintenance fee schedule is, which is a good question to ask your patent attorney at the end of your application process.
Patent maintenance fees are due after 3.5 years, 7.5 years, and 11.5 years after the patent was first filed. There is a 6-month grace period in which the patent holder or responsible party can pay the fee, plus surcharges, to keep the patent from expiring. After the 6-month period, the patent will expire and you will be unable to recover it without filing a petition to have the rights reinstated. This is where you may have an opportunity to take over a recently-expired patent.
Taking Over an Expired Patent
If you have identified a patent that has recently expired due to nonpayment of maintenance fees, there may be an opportunity to take it over. However, this opportunity is the same as if you were to take over an active patent: you must make a transaction with the patent holder.
If a patent has expired and is within the grace period, you can contact the patent holder and attempt to broker a transaction with them. If you are able to come to an agreement, you may be able to pay the maintenance fees, late fees, and any additional cost that you negotiate with the patent holder, while they petition to have the patent reinstated. Managing these purchases and agreements are complicated even when the patent is not expired and on the verge of becoming public domain, but there is an additional level of complexity when the time is of the essence, and the patent holder may have decided to let it run out or has simply just forgotten.
After the grace period has passed, there is no chance of reinstating the patent, as it is simply turned over to the public domain. In this case, you may be able to work with an attorney to determine how you can incorporate this innovation into a new, patentable intellectual property that you may be able to file your own patent for.
Can I Pay Maintenance Fees and Take Over an Expired Patent Alone?
There is no possibility to simply pay the maintenance fees to the USPTO and take over a patent — it is either held by the person or entity maintaining the fees or it is turned over to the public domain. Unlike real estate that may go to an IRS auction after non-payment of taxes, intellectual property follows a different set of guidelines.
If there is a patent that has recently expired that you are interested in pursuing, contact The Patent Professor immediately to begin exploring your options. While there is no guarantee that you will be able to ultimately own the patent, there are many different options that we could try to negotiate with the patent holder before time has run out. Our 20+ years of experience working as a Florida patent lawyer for many clients in many situations will be an enormous asset to your situation and can help tremendously with brokering a deal for an expired patent.