A patent is a legal right enabling the owner to stop someone else making use of an invention. Once granted a patent will provide the owner the exclusive right to prevent others from making, using, selling, importing or distributing the patented invention without permission for a period of up to 20 years from filing (assuming the renewal fees continue to be paid).
So far so good, right? But what happens when a patent application doesn’t make it to grant within the period of 20 years from filing? What happens then? And why would you still want to prosecute a patent application for 20 years anyway?
These aren’t just random theoretical questions but the questions some of us at IPcopy were asking ourselves last week when we caught sight of not one but two cases that were still pending more than 20 years from filing.
Curiosity suitably piqued, we did a little bit of investigation and discovered that the two cases were related and were actually both divisional applications filed from an application with a filing date in April 1994. These two divisional applications were themselves filed over 10 years ago. Both cases had recently issued examination reports with standard 4 month deadlines.
This scenario was a little unusual so we asked around to see what the procedure would be. The answer that came back was that examination would continue as normal until the case was refused or withdrawn. Reference was also made to the continued payment of maintenance fees but of course these two cases are now off the end of the scale as far as maintenance fees are concerned. The Applicant has paid over 20,000 Euros or so over the course of the life of the application but there are no more maintenance fees to pay since the EPO fee sheet stops at year 20 (we can’t help thinking you’re missing a trick here President Battistelli!).
So, the cases will continue it would seem. But why might you want to do this? Two reasons spring to mind. Firstly, if there was any suggestion that there might be an infringement occurring then it would be necessary to get the patent to grant before being able to enforce it. Secondly, there may be licensing arrangements in play. For example, an exclusive licence may extend beyond the expiry of the patent.
The two cases in question are in their 21st year. Have any readers come across cases that have been pending longer? What’s the longest that a case has been pending? Does anyone know or can anyone check?
And was the EPO aware of the wry smile that they probably caused when the representative read the examination report and was asked that “in order to expedite the procedure…..” he should make sure he addressed certain issues when responding to the exam report!
Mark Richardson 20 November 2014
Infringment and related damages can be claimed after expiration of the patent for acts carried out before expiration and before Grant. In italy for example the retroactive term duration is of five years. Furthermore, an open examination proceeding and thus no definite claim wording is very Dangerous, since the competitors will feel unsure in inventing around and the patent owner has still the possibility of tailoring the claims on the product of the competitor. To me it seems quote a good competitive advantage
Take a look at EP0501781 – it was pending for over 20 years and it’s not even a divisional.
EP2289517 (a divisional) was granted over 21 years after the filing date.
Of course, none of these are as impressive as Gilbert Hyatt’s US applications, some of which have been pending for 40+ years.
Interesting about Hyatt. I hadn’t heard of him before but have just read this article from earlier this year – http://www.bloomberg.com/news/2014-02-24/inventor-waits-43-years-for-another-chance-to-shock-tech.html