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Are Dead Patents Free to Use?

by | Jan 3, 2024

Are dead patents free to use

 

Admittedly, perhaps not the most elegant title ever devised, but a patent does not grant an eternal monopoly over an invention.

A granted patent will always lapse or expire eventually, normally by 20 years from the date it was originally filed, and plenty of patents permanently lapse earlier than that for a variety of reasons.

With that in mind, you might rightly wonder: is it safe to copy the invention that was in the patent? The answer is not as straightforward you might think.

Is the patent actually dead?

The legal status of a patent or application is usually publicly available on an official patent register, which is generally kept up to date by the national Patent Office of the country in question. For example, the UK patent register and European patent register are both readily searched using a patent application or publication number. This usually makes it easy to check whether a given patent is or isn’t in force.

There are numerous different terms used to describe a dearly departed patent or application in various different countries: expired, lapsed, terminated before grant, withdrawn, deemed withdrawn, abandoned, revoked, not in force, invalid, ceased… The most reliable of these is usually “expired” because it means the patent has run its full course and won’t be back. The rest do not always end up being a final status because there are various mechanisms to recover a patent that has lapsed.

Are dead patents free to use

A patent might still be alive even though it looks dead, somewhat à la Schrödinger’s cat…

A common reason that a granted patent may no longer be in force is that its (often annual) renewal fee isn’t paid. However, don’t celebrate straightaway if you’ve been keeping an eye on a particular patent and the patent owner hasn’t paid the renewal fee on time. It’s possible to pay a renewal fee up to 6 months late for a UK patent or European patent without losing the patent or application.

Even if a renewal fee is missed entirely, a UK patent can be restored (i.e. revived) up to 19 months from when it was initially due for renewal. A UK patent application can also be reinstated (i.e. revived) up to 12 months after another missed procedural act. All that is required where the UK is concerned is that it was “unintentional” on the part of the UK patent owner to miss the deadline. There is a safety net for anyone else who might have begun to ‘work the invention’ in good faith when the patent or application was dead, but it all depends on the dates involved and you should keep good records of what you’re doing just in case.

It is also worth bearing in mind that some decisions to invalidate or revoke patents can be subject to appeal. For example, a European patent that is successfully revoked at Opposition might remain granted for years whilst an appeal plays out. So, just because you’ve seen the headline of “patent revoked!” doesn’t necessarily mean it’s all over.

Is there a still a risk of infringement?

The take-home message of the last section was: don’t assume that a recently-deceased patent is necessarily going to stay dead.

The take-home message of this section is: even if a patent is truly, finally dead, don’t assume there is no infringement risk just because that one patent is dead.

You can’t infringe a patent after it has expired or permanently lapsed, but there may be other patents (pending or granted) which affect your freedom-to-operate in a particular technological field and/or country. Those patents may or may not be owned by the same person/company that owned the lapsed patent. Indeed, there may be other types of intellectual property rights (registered designs, unregistered design rights, copyright…) that impact exactly what you are able to do without risking infringement.

The safest option is always to carry out a dedicated freedom-to-operate (FTO) search, which can be tailored to find patents and/or other rights which present an infringement risk. However, FTO searching can become expensive quite quickly – how long is a piece of string?

Doing a single FTO search isn’t guaranteed to find everything that might pose a risk either. Patent applications can remain unpublished up to 18 months (or sometimes more) after filing, and no amount of patent searching will find an unpublished patent application. It’s a good idea to have dedicated patent watches set up so that you can keep an eye on who is patenting what.

Are Dead Patents Free to Use

The Gillette razor was previously patented as Letters Patent 28,763.

If you are looking to mitigate the risk of patent infringement, then one possible way to do that is to use the patented invention in exactly the way set out in the lapsed patent – no additions, no omissions. Otherwise, there’s a risk (however slight) that somebody has patented the slightly different version with the relevant addition/omission. By doing exactly what the lapsed patent says (or something that is very definitely an obvious variation of that – the so-called ‘Gillette defence’), anyone with a later patent is not going to have a good argument for patent infringement. Of course, that doesn’t necessarily exonerate you from infringing an earlier-but-still-in-force patent!

Is it easy to find dead patents?

There actually is a patent ‘obituary’ as it were, at least as far as patents for the UK are concerned. The UK Intellectual Property Office keeps a handy list of UK patents which are not in force.

Other patent offices may also provide a similar service; for example, the Dutch Patent Office has an advanced search option which allows you to find Dutch patents having a particular legal status (lapsed, etc.).

Another option where European patents are concerned is to sign up for Register Alerts. This is a useful passive way to keep an eye on both pending European applications (to see how patent prosecution is going) and also granted European patents to monitor when the patent lapses in various European countries. Of course, this does require you to know about the patent in the first place, as opposed to being able to search through a dedicated list of patents that are no longer in force.

A word of caution – there are some third-party sites that provide lists of expired patents but you should always check the official patent register to confirm whether a patent has lapsed. Some countries, notably the USA, provide patent term extensions/adjustments that lead to patents being kept in force longer than 20 years – sometimes years(!) longer – whilst in Europe a patent may occasionally be succeeded by a Supplementary Protection Certificate (SPC).

What if a patent is still in force?

If you don’t want to wait for a patent to die of natural causes, there are various ways to attack patents at the UK Intellectual Property Office or the European Patent Office, or at court. This usually first requires finding prior art which was publicly available before the patent to attack novelty or inventive step.

You could also check if a ‘licence of right’ is available for the patent – the UK IPO keeps a list of UK patents where licences of right are available alongside the list of patents that are no longer in force. The World Intellectual Property Organization (WIPO) also has a search function that allows searching for international (PCT) patent applications where the owner is open to providing a license – just tick the checkbox next to “Licensing availability” when doing a search.

And lastly, you might find that inspiration strikes when you see another patent, regardless of whether it is still in force. It is always worth considering patenting inventions of your own that improve upon old technology, whether to protect your market share, deter others from entering the market straightaway, or to benefit from Patent Box tax relief.

For further input on any of the above, or any other intellectual property matter, contact us today and one of our attorneys will gladly be of assistance.

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