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   AQUIRING AN EXPIRED PATENT-NON PAYMENT OF MAINT. F
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plo
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Re: AQUIRING AN EXPIRED PATENT-NON PAYMENT OF MAIN
« Reply #5 on: Apr 28th, 2004, 11:47am »
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What would happen if I owned a patent and someone else infringed on my patent after I failed to pay the maintenance fees on time?  What if I unintentionally forgot to pay and wanted to pay my maintenance fees after finding out that someone has infringed on my patent.  Can I sue them then?
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JimIvey
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Re: AQUIRING AN EXPIRED PATENT-NON PAYMENT OF MAIN
« Reply #6 on: Apr 28th, 2004, 4:16pm »
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Well, I'm tempted to give the typical law school smart-ssa answer that "Yes, anyone can sue for anything.  But can you collect? (i.e., win)."
 
You can revive your patent by paying the fees late and filing a petition to revive (reinstate? -- the name may be different for patents than for applications).
 
During the time between the expiration of the time to pay the maintenance and the acceptance of the late fee, the patent is in the public domain and you cannot collect for infringement during that time.  Off the top of my head, I don't remember if the infringing party/ies can continue their infringing activities after acceptance of the late fee.  They might.  No new infringement can occur without liability after acceptance of the late fee, and I'm pretty sure the party taking advantage of the lapse of the patent cannot substantially increase their infringing activity after acceptance of the late maintenance fee.
 
I hope this helps.  Hopefully, someone else here can fill in my lapsing memory on this topic.  Once the maintenance is accepted late and the patent reinstated, must all infringing activity stop, or are there intervening rights?
 
Regards.
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Roy Novak
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Re: AQUIRING AN EXPIRED PATENT-NON PAYMENT OF MAIN
« Reply #7 on: Sep 22nd, 2006, 1:29pm »
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I enjoyed reading the questions and the answers posted here.  
 
I have a further question.  If the infringer infringed the patent in the past, would the patent owner still be able to sue them for past damages?  For example, if the patent was valid up to the date it went abandoned for failure to pay the M-fee, say @ year 7.5, would the patent still have value for past infringement?  A patent owner can sue for infringement in the past up to the limitations of laches (e.g., ~ 6 years back from a present date).  However a patent owner would not be able to enjoin (the real teeth) an infringer for current or future activities because the patent would be in the public domain going forward (assuming it was not revived).  Do you agree with this analysis?Any other thoughts?
 
Thanks
Roy
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JimIvey
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Re: AQUIRING AN EXPIRED PATENT-NON PAYMENT OF MAIN
« Reply #8 on: Sep 22nd, 2006, 2:53pm »
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Yes, that's pretty much how I understand it.  
 
1. Infringement of a patent claim is only actionable before expiration of the patent -- either by failure to pay a maintenance fee or expiration of the full term of the patent.  
 
2.  Infringement of a patent claim is only actionable for that part the infringement that occured no earlier than 6 years before the filing of the suit.
 
3.  Injunctive relief is only available for current and future infringement, not past infringement (at least not until time travel is possible).
 
Any question re what you can sue for ought to be answerable by any or any combination of those points.
 
Regards.
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wc
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Re: AQUIRING AN EXPIRED PATENT-NON PAYMENT OF MAIN
« Reply #9 on: Apr 5th, 2007, 11:51pm »
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Quote:
During the time between the expiration of the time to pay the maintenance and the acceptance of the late fee, the patent is in the public domain and you cannot collect for infringement during that time.  Off the top of my head, I don't remember if the infringing party/ies can continue their infringing activities after acceptance of the late fee.  They might.

 
Well, I hope not, but Im not a patent attorney so I dont know.
 
Quote:
Hopefully, someone else here can fill in my lapsing memory on this topic.  Once the maintenance is accepted late and the patent reinstated, must all infringing activity stop, or are there intervening rights?

 
Since the original objective of the USPTO was to stimulate innovation, and since  its only criteria for accepting applications to re-instate patents which expired due to a missed maintenence  fee are total unintentionality or unavoidablity for the duration it would seem that the issue of  patent holder rights was settled by those reviewing the petition for reinstatement. Otherwise, why would there even be a missed fee petition at all?  
 
If the patent holder must know when his fees are due, should not the infringer know that the patent does not become (for practical purposes)  irretreviably abandoned until two years past the missed fee date?  
 
It seems to me that, if the answer to this question is not a simple matter of law, then the USPTO could be rightly accused of  acute dichotic duplicity rather than a simple reversal of its charter.  
 
This is a very interesting question, and I would certainly welcome enlightenment as well.
 
Cheers,
wc
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