How Do You Check Prior Art in Foreign Patents

How practise I figure out if a US patent is still in strength?

A patent may be enforced starting on the date information technology is issued by the USPTO (its "Issue Appointment"), and running for the length of its term, unless it expires earlier. After the patent expires, the invention is available to all.

To make up one's mind if a patent is notwithstanding in forcefulness, you lot will need access to the USPTO'south website. You can discover virtually of the data in the text-based display, simply non all. You will need to look at the patent prototype, which is in PDF format. You lot can also wait the patent upwardly in the European Patent Office's espacenet organisation or in Google Patents and retrieve the same text and PDF image. Employ whichever system you detect to be the easiest for y'all.

Note: The USPTO has come up with a Patent Term Calculator spreadsheet. The program allows you to judge patent term by filling in data in a Microsoft Excel spreadsheet - see the USPTO website for instructions and a copy of the spreadsheet.

To determine if a patent is still in forcefulness yourself, follow these steps:

0. Shortcut: Utility Patents with numbers nether v,000,000

If the patent is an original-result Utility Patent (non a Design Patent (number starts with "D" or "Des") or a Found Patent (number starts with "P" or "Plt") or a Reissue of a Utility Patent (number starts with Re))and the patent number is 4,999,999 or less - stop hither. All such patents expired on or before August 31, 2010. If this shortcut doesn't apply, you lot will accept to work through  the procedure below.

1. Start with the Basic Patent Term

Recall the patent on the USPTO patent database, the European Patent Part's espacenet system or in Google Patents, if yous do non already have a printed copy. If y'all need help reading the patent, run into our "How to read the first folio of a patent" folio.

Utility Patents and Plant Patents based on applicationsfiled after June viii, 1995,(actual filing date, not priority date),take a term of 20 years from the US filing date* of the primeval non-conditional awarding** in the chain of parentage upon which the patent is based. For more details on how this calculation works, meet our page on "Patent Timeline".

Utility Patents and Plant Patents based on applications which wereawaiting on June viii, 1995 (bodily filing engagement, non priority date), and whatsoever Utility or Institute Patent which was issued on or later June seven, 1978 and had not expired before June 8, 1995, have a term measured by thelonger of 17 years from the appointment of issueor 20 years from the date of US filing* of the earliest non-provisional** application in its concatenation of parentage.

*=Past "U.s. filing date" we mean, if the United states of america application claims priority from an earlier-filed foreign application (that is, information technology gets the benefit of a filing appointment in a foreign patent role for purposes of determining what is "prior art"), it is the actual filing engagement of the kickoff awarding in the USPTO which starts the 20-yr term, not the filing date of the foreign application.
Annotation: If the patent is based on a PCT awarding, the "US filing date" for the Percentage application is its International Filing Date (listed on the patent equally particular [22] "PCT Filed"), not the date it entered National Phase (item [86] "371 Engagement").

**=By "not-provisional" nosotros mean, well, non provisional. In other words, if the patent claims the benefit of the filing date of a conditional application, that provisional filing date does non start the term running***. You expect at the actual filing date of the utility patent awarding to make up one's mind patent term. However , if the patent was a continuation, continuation-in-part or bounded of an earlier "regular" patent awarding, it is the filing appointment of the first filed earlier "regular" patent application which is used to compute patent term.

***=Additional note (thanks to Stephen Nipper for pointing this out) - in the unlikely effect that the bidder chose to convert the provisional application into a "regular" application under 37 CFR 1.53(c)(3), instead of following the usual procedure and filing a new utility awarding claiming the benefit of the conditional, the provisional filing engagement DOES offset the term. This is one reason why one should NEVER use that procedure - and the USPTO regulation establishing it specifically says and so. Still, there might be some patents out in that location which are based on converted provisionals, and if so, their term is up to a year shorter than it might otherwise appear.

Utility and Plant Patentsissuedearlier June 7, 1978,  had a 17-year term, measured from the date of issue, and have all expired.

Pattern Patents granted on applications filedbefore May 13, 2015,accept a term of 14 years, measured from the date of issue.

Design patents granted on applications filedon or after May thirteen, 2015 , have a term of fifteen years, measured from the date of issue.

Note that some websites reported the change for design patents to a xv year term every bit being effective on December 18, 2013. That is an error based on a misinterpretation of the original Federal Register announcement. The alter was constructive on thelaterof Dec 18, 2013,or three months after the US deposited a paper at WIPO relating to the Hague Convention. The eolith did not happen until February 13, 2015, so the change occurred three months after that.

two. Is the term of this patent tied to the term of another patent?

Some patents have less than the usual life span considering their terms are express to the terms of earlier-issued patents. This is chosen a "last disclaimer", and is a event of filing two applications which claimed substantially the same invention.  Concluding disclaimers will be marked on the later-issued patent. Sometimes these are flagged by an asterisk after the patent issue date, only sometimes they only appear in the text of the patent or with the "related application" data on the confront of the patent. In rare instances, there will simply be a note printed on the patent which says, "This patent is subject to a terminal disclaimer", just there is nothing on the printed patent indicating which before patent the term is linked to.

In most cases, yous will demand to go to the USPTO Public PAIR system and attempt to find the concluding disclaimer itself in the Image File Wrapper, if there is i. If the patent is as well old to take an Prototype File Wrapper, you can look on the "Continuity" tab in PAIR or at the list of related applications on the patent itself - if there'south but one prior patent in the concatenation, the final disclaimer most always refers to that patent. Call back that patent, and go through this whole procedure for it, and y'all will find out the mutual expiration date for both patents.

Once you lot know what patent the terminal disclaimer was based on, you need to consider what the terminal disclaimer said was the point at which the term was disclaimed?

• The Full Statutory Term:Most terminal disclaimers used in recent years just refer to the "full statutory term" of the earlier patent. If the earlier patent's term was extended (come across department 3, below), then the "full statutory term" probably includes the period of the term extension, peculiarly if the last disclaimer refers to the term every bit set by 35 USC 154, since that department both sets the term of the patent and specifies an extension to the term for USPTO delays.
• A Specific Appointment:If the terminal disclaimer explicitly disclaims term past a stated date ("all term after March 3, 2013"), and does non also reference the term of any other patent, and so that date sets the disclaimed term for the patent. This practice was fairly common before 1995, when patent terms were measured from the issue appointment of the patent and there were no term extensions. It is (and should exist) rare today.
• Both a date and the term of the prior patent:Some older terminal disclaimers (or subsequently TD's written by someone using an old form - it happens) gaveboth a date on which the earlier patent would ordinarily expire, andalso said the term disclaimed was the term of the before patent. Co-ordinate to several cases, the "specified date" is measured past the term of the earlier patent, even if that expiration engagement is later than the specific engagement given. These cases mostly dealt with patents where the reason for the deviation in the term of the base of operations patent was that the constabulary had changed and extended the term of the earlier patent, due to the June 1995 change from 17-years-from-issue to twenty-years-from-filing. In those cases, when the last disclaimers were filed, the specified date and the normal expiration date of the patent were the aforementioned seventeen years from consequence.  Since the intent of the disclaimer was to link the term of the later patent to the term of the earlier patent, the PTO and the court said it was not foreseeable that former later on the constabulary would alter and make the total term longer than the listed date, and therefore the actual term would control as a matter of fairness.

Normally, for patents filed afterwards June 1995 which have a 20-twelvemonth-from-filing term, and where the patent with the disclaimer is a "child" of the base patent - for instance, if it is a continuation, continuation in part or divisional of the earlier patent (this will nigh always be the case) - a terminal disclaimer volition have fiddling practical event. The 2 patents would take had the same basic expiration engagement, anyway.

Note that a last disclaimer ties the term of a later-issued patent to thenormal term of the earlier-issued patent. An earlier-than-normalexpiration of the starting time patent, for example considering the possessor failed to pay the maintenance fees, does not affect the term of the patent subject to the disclaimer. This was affirmed in a 2011 district court case, Hoffman-La Roche Inc. v. Orchid Chems. & Pharms. Ltd. (D-NJ 2011),and by the Federal Circuit in thePharmacia v. Par Pharmaceutical case (CAFC 2005)

three. Was the bones term extended?

Patents based on applications filed on or after May 29, 2000 (actual filing date, not priority date), might have had their terms extended for Patent Office delays beyond certain limits. Such extensions, called "patent term adjustments", are automatically given when the patent is issued, and they are usually marked on the face of the patent, flagged with "(*)". For example, see patent 7,613,700 - "(*) Subject to whatever disclaimer, the term of this patent is extended or adapted under 35 USC 154(b) by 291 days." These adjustments are calculated mathematically based on a formula which takes into business relationship when each office action was sent by the USPTO every bit compared with a standard for such actions, and subtracts whatsoever delays acquired past the applicant's filibuster, and so on.

Special rule for patents issued between August 2009 and March 2010:The January 2010Wyeth determination held that the USPTO had been computing these adjustments incorrectly in some cases. Based on this decision, the USPTO announced in Jan 2010 that patents issued before March two, 2010, which were awaiting for more than 3 years could accept their adjustments recalculated if the patentee filed an SB131 form within 180 days of the consequence date of the patent - effectively, then, this meant that extensions were bachelor for patents issued afterward August 2009 and earlier March 2, 2010, and the last appointment anyone could file for aWyeth adjustment would have been September 2, 2010. Not everyone who was eligible for extension applied for it. For those who did apply, and if the USPTO recalculated and discovered an error had been made, the patent term adjustment printed on the confront of the patent would non be correct. However, whatsoever affected patent should exist new enough to have theWyeth request form available in the USPTO's Public PAIR system.

Special Cases:Some patents have had their terms extended based on extreme delays in government approvals outside the Patent Office. This is very unusual, and applies almost always to pharmaceuticals (for example, Claritin® or Prozac®), food products (Aspartame) or medical devices or procedures, where FDA approving can sometimes eat up most of the patent term earlier the product can be brought to market. It is likewise theoretically possible that a patent could have its term extended by Congress by the passage of a Private Law applying only to that patent - we say "theoretically" because this has non happened since the late 1980's, no current patents are discipline to such extension, and the process was essentially rendered obsolete by the passage of 35 USC sections 155 and 156, which provide for the extensions noted above.

For a list of patents extended under sections 155 or 156 or by individual law, run across the Patent and Trademark Part'due south Extended Term List

Effect of Terminal Disclaimers (see section two above) on term extensions:

Extensions for FDA approval - termisextended past disclaimer date:In theMerck v. Howdy-TECH case, decided in March 2007, the Court of Appeals for the Federal Circuit held that if a patent is subject to a last disclaimer, the term extensions for regulatory review granted past section 156 of the Patent Law (35 USC 156) are added on after the concluding disclaimer date. It can safely exist assumed that extensions nether section 155 would exist treated similarly.

Extensions for USPTO delays - term isnot extendedpast the disclaimer engagement:Term extensions due to USPTO filibuster are governed by section 154 (35 USC 154(b)). Department 154(b)(B) says:

(B)Disclaimed term.— No patent the term of which has been disclaimed across a specified date may be adjusted under this section beyond the expiration appointment specified in the disclaimer.

While this section refers to "a specified date", as noted above most terminal disclaimers but disclaim term by "the total statutory term" of the other patent.  In that location have been a few cases on this, and they have held that this reference to a "full statutory term" date would exist a "specified date" under this section. Therefore, it tin probably be considered as a full general rule that term adjustment for USPTO filibuster cannot extend the life of a patent past a disclaimer engagement, whether that date is given explicitly or but by reference to the term of the earlier patent.

4. Was at that place whatsoever reexamination or voluntary disclaimer which resulted in a loss of some or all of the claims?

This would exist noted on a document attached to the patent image on the USPTO database, usually as the last page in the image file.

On rare occasions, issued patents are withdrawn from issue on the club of the Commissioner of Patents. In these cases, the patents are usually not bachelor on the USPTO database (but sometimes they are on other databases, such as the EPO'southward Espacenet, Google Patents or the for-pay systems).

v. Accept the required maintenance fees been paid?

Utility Patents:There are maintenance fees due at 3.5 years, 7.5 years and xi.5 years from the date of upshot. The "payment window" opens six months before the due appointment (that is, 3, seven or 11 years later on result - earlier payments are not accustomed), and closes i yr later (that is, four, 8 or 12 years after issue). If the fee is paid during the "grace period" of half-dozen months after the due engagement ("Surcharge Date"), a surcharge is added. If the maintenance fees are not paid earlier the window closes, the patent expires as of the end of the grace period.

Note:Patents based on applications filed before December, 1980 (bodily filing engagement, not priority date), were non discipline to the payment of maintenance fees. Most of these patents have long since expired at the ends of their terms, so this exception will seldom arise.

You can use the USPTO's Patent Awarding Information Retrieval (PAIR) system to determine if maintenance fees accept been paid. Enter the patent number on the first screen (y'all will need to use the pull-downwards menu to modify "Awarding Number" to "Patent Number", or enter the application number, if you know it). On the side by side screen, click on the "fees" tab. Click on "Maintenance Fees - Retrieve Fees to Pay", and you will see a screen like this:

Look at the "Window Opens" and "Window Closes" lines. In this example, the seven and a one-half year maintenance fee is due between February 24, 2005, and February 24, 2006 (with a surcharge due if the fee is paid after August 25, 2005). Since both these dates are in the future (as this is being written in the fall of 2004), the patent is nonetheless current (also notation the line at the bottom of the screen which says, "Currently there are no fees due."). If the maintenance fee is non paid earlier the "Window Close" date, the patent will elapse as of the "Surcharge Date".

As it happened, the maintenance fees on this instance patent were not paid, and the patent expired in August, 2005. If you await the patent up today, instead of the payment window display the PAIR system volition requite an mistake message saying "*ERROR: At that place is no argument bachelor for the selected payment yr because the Patent has expired."

You tin also click on the "Maintenance Statement" selections to ostend that a fee was paid, and how much it was.

In December, 2004, the PAIR organization was enhanced to note a status of "Patent Expired Due to Non-Payment of Maintenance Fees Under 37 CFR 1.362" for patents which have expired for that reason. It appears that this just affects patents which expired later on the date the enhancement went into upshot. Obviously, if the status has this annotation, and then the patent is expired. If it does not, you lot still need to follow the process above to check if maintenance fees were, in fact, paid.

But be careful  - fifty-fifty if it's expired considering of non-payment of maintenance fees, the patent might still be revived:Patents which expired due to nonpayment may be revived, so long as the delay in paying the fee was unintentional.

Until Dec 2013, an application to revive a patent based on unintentional delay had to have be filed within two years of the end of the grace period, and this folio used to say that if information technology had been two years since the patent expired it could exist safely considered to be permanently dead. Nevertheless, the Patent Law Treaty amendments which were instituted in December 2013 eliminated the two-year requirement, and patents can now be revived subsequently that time but by paying the missing fee and a petition fee and stating that the delay was unintentional. The USPTO can asking boosted data, and they tin refuse such petitions, only it is unclear if they volition do so. Therefore, at the present time, there is a finite risk that a patent which expired for non-payment of a maintenance fee may come up dorsum.

But to be completely clear, the final paragraphonly applies to expiration due to nonpayment of maintenance fees- patents which expired at the cease of their termcannot exist revived.

Institute or Design Patents:No maintenance fees are due on Establish or Design patents.

half dozen. Has the patent been declared invalid past a court?

If a patent is declared invalid by a court, it becomes unenforceable. Unfortunately, there's no certain or easy way to know this.

If yous have access to the Lexis or Westlaw or BNA USPQ databases (all bachelor only for fees, unfortunately), you lot can try looking upwardly the patent number in their databases of reported courtroom cases to encounter if the patent might have been mentioned in a example report. One time you have a instance citation you tin look upwardly the case in the Public Access to Courtroom Electronic Records (PACER) organization. You could also try just doing a Google search on the patent number and run across if a reported case turns up, you never know.

If you are concerned about a patent, it may exist advisable to accept a patent chaser (for example, one of the attorneys at Dark-brown and Michaels) exercise a validity written report and opinion on the patent. The attorney will practice a search to find prior fine art which might invalidate the patent, and will review the patent's file at the USPTO to come across if there is anything which might affect the validity or scope of the patent. Feel free to contact Brown and Michaels if yous recollect you might need this service.

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Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent procedure.

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