Considerations when Evaluating the Validity of a U.S. Patent

Robert J. Sayfie's Patents Legal Blogs

Licensed for 26 years

Attorney in Miami, FL

Considerations when Evaluating the Validity of a U.S. Patent:

1. Is the
patent expired? In the United States, utility
patents
are enforceable for a period of twenty (20) years from the filing
date, if the maintenance fees have been paid. Design
patents
are enforceable for 14 years after the grant of the patent. Utility
patents require three (3) maintenance
fees
to be paid to prevent the patent from being abandoned, at periods of
3.5, 7.5, and 11.5 years after issuance. If the fees are not paid, then the
patent is abandoned, and no longer enforceable.

2. Have the maintenance
fees been paid? An inquiry with the proper division of the United States Patent and Trademark
Office
will allow you to determine if the maintenance fees have been paid.
If not, then the patent is abandoned, and not enforceable.

3. Is the
patent invalid under 35 United States Code,
section 102
? For example, this code prevents a patent from being
valid if:
(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for patent;

(b) the
invention was patented or described in a printed publication in this or a
foreign country or in public use or on sale in this country, more than one year
prior to the date of the application for patent in the United
States;

(c) he has abandoned the invention, or

(d) the invention was
first patented or caused to be patented, or was the subject of an inventor’s
certificate, by the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for patent in this country
on an application for patent or inventor’s certificate filed more than twelve
months before the filing of the application in the United States.;

(e) the invention was described in – (1) an application for patent, published
under section 122(b), by another filed in the United
States before the invention by the applicant for patent or (2) a patent granted
on an application for patent by another filed in the United States before the
invention by the applicant for patent, except that an international application
filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection
of an application filed in the United States only if the international
application designated the United States and was published under Article 21(2) of such
treaty in the English language…

The above statutes has a
few other provisions that may cause a patent to be invalid.

These
considerations are only a starting point and a proper evaluation many times
requires a thorough review of the applicant’s filings, and office actions from
U.S. Patent and Trademark Office .
Visit www.sayfiepatents.com

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