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Author Topic: Expired patents that get revived  (Read 371 times)

LF

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Expired patents that get revived
« on: 06-06-18 at 08:59 am »

I'm an Agent, so I figured I'd pest the lawyers in the Forum, as always, thank you. (Also, BTW, this is for a personal company I am planning/considering starting, not as a service to a client).

Here's the scenario:

Patent X expired for failure to pay the maintenance fee. I know that if I petition to have it re-instated (for failure to pay the maintenance fee), the Office of Petitions will likely re-instate, it as long as you do it within a period of time from abandonment. I KNOW this, for in fact, I have done that for cases I've inherited from other practitioners. Heck, I think there is a way to do an ePetition for this in some cases these days!

Imagine that in the period when it is 'abandoned', I build my machine, using the tech in the patent. In fact, take the scenario to the limit, I KNOW I would infringe, but hey, it's expired!

The the patent is re-instated. I assume if I do everything after the patent is 'revived', I'm SOL.

The question is, is there case law showing what breaks I get if I did things during the break, during the period of abandonment?

What do you think I need to prove? Prove I did my design during the interim? If I can do that, that enough?

Or only enough for the machines built/sold/ordered during the interim?

Or once they re-state, I'm SOL?

Thanks in advance,

Luis
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lazyexaminer

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Re: Expired patents that get revived
« Reply #1 on: 06-06-18 at 10:21 am »

35 U.S.C. 41(c)(2).
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I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

LF

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Re: Expired patents that get revived
« Reply #2 on: 06-06-18 at 10:55 am »

Thank You, Gracias, Merci Beaucoup, Obrigado, etc.,etc.,etc...
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ConfusedIP

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Re: Expired patents that get revived
« Reply #3 on: 06-06-18 at 04:03 pm »

LF, your scenario does suggest that intervening rights might attach during the "abandonment" period, but be careful.  There is still risk. While the doctrine of intervening rights offers some protection in your scenario, it can only be raised as a defense during patent litigation (expensive).  See, e.g., Fonar Corp. v. G.E. Co., 107 F.3d 1543 (Fed. Cir. 1997) (intervening rights “protect the rights of one who began using or who took steps to begin use of a patent which expired for failure to pay a maintenance fee,” and do not offer  protection to a party who infringes a patent before it lapses). So assuming that a court permits the continued manufacture and sale of a product developed during the intervening rights period, it could still condition that on payment of an ongoing royalty.
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LF

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Re: Expired patents that get revived
« Reply #4 on: 06-12-18 at 07:16 am »

Op. Cit. the above, i.e. Gracias...
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