It’s time to talk about a longer patent term in America

By Gene Quinn
August 30, 2017

The entire premise of an intellectual property system is that an individual will give up some of her rights (i.e., the right to keep the innovation secret) in exchange for government recognition of the right to enforce a property right. Of course, society will benefit in multiple ways. In the near term society benefits through diffusion of the innovation by way of publication of the invention in a patent, and if the product or service is commercially desirable society reaps the rewards from availability of the technological advance, as well as jobs and the associated economic advantages.  In the long term, after the patent expires, anyone will be able to freely use the innovation and all obvious variations of the innovation. With many patents lasting as little as 4 years, others only 8 years and only relatively few of the most commercially valuable lasting the full patent term, this is a great bargain for society.

Indeed, more than 95% of the medicines identified by the World Health Organization as being “essential medicines” are off-patent. These once patented medicines are now forever free to be used without the need to pay any fee or tribute to the innovator. In addition to allowing others to stand on the shoulders of innovators that have come before, once a patent expires society reaps the benefit without any further payment or tribute forever.

Over the past 12 years, starting with eBay v. MercExhange, where the Supreme Court unceremoniously did away with the presumptive right to a permanent injunction when a patent owner successfully prevails against an infringer in litigation, there has been such erosion in the patent right. The patent right granted by the federal government is ostensibly a right to exclude others from making, using, selling and importing, but if you have no right to a permanent injunction upon demonstrating that the patent has been confirmed valid and the defendant did infringe, exactly how much of an exclusive right is a patent any more?

Add to this the fact that title to a patent never quiets and can be challenged at any point during the enforceable period of the patent, and it is difficult if not impossible to actually consider a patent a property right at all. Never mind that the law – 35 U.S.C. 261 – actually says that patents have the attributes of property. If there is no actual right to exclude and the right can be taken away at any time and even after it has been successfully defended in multiple different forums, how can it be a property right? Calling a patent a property right given the development of U.S. patent law is completely and totally disingenuous, and that is being kind.

The general term for a patent is 20 years starting from the filing date of a U.S. patent application. There are many different rules governing patent term, and maintenance fees need to be paid to keep a patent for the full term, which is generally not done for the majority of patents, but as a general rule patents last 20 years from the filing date. Some, perhaps much, of that time is wasted because of the Patent Office reviewing the application, which in at least some cases will be added back onto the patent. Generally speaking, even if all maintenance fees are paid the longest useful life of a patent is 17 years, which will be enjoyed by very few patents. For many patents the term is much less, falling into the public domain after only 4 years for failure to make the first maintenance fee payment, or 8 years for failure to make the second maintenance fee payment. Even pharmaceuticals enjoy a short-lived patent because of so much time being used up in FDA approval processes.

The brief duration of the patent term is why a patent is considered a wasting asset. Today, given the erosion of the patent rights over the last 12 years, one has to wonder whether the brief patent term is long enough to properly incentivize innovators.

Now lets look at the duration of a copyrighted work. A copyrighted work that is created on or after January 1, 1978, is ordinarily given a term enduring for the author’s life plus an additional 70 years after the author’s death. In the case of “a joint work prepared by two or more authors who did not work for hire,” the term lasts for 70 years after the last surviving author’s death. For works made for hire, and for anonymous and pseudonymous works, the duration of copyright is 95 years from publication or 120 years from creation, whichever is shorter.

However you cut it, the term of a copyright is MUCH longer than the term of a patent. One way to justify the difference between these two forms of intellectual property that are both mentioned in Article I, Section 8, Clause 8 of the U.S. Constitution is that under the Copyright Act there are numerous fair uses and defenses to copyright infringement actions. Although copyrights are in the first instance considered “exclusive” in nature, there are an awful lot of things that a copyright owner cannot exclude. Many think the term of a copyright is too long, but having a term longer than the patent term always made sense to me because copyrights were at best thought of as a very weak sister to patents.

In 2017 copyrights are no longer the weak sister. Patents have become so gutted, so easy to challenge, so time consuming, difficult and costly to obtain, and worth so little compared to the licensing fees or damages they could generate in the case of infringement.

It is time to serious ask whether the 20 year basic patent term – a term that no patent ever actually fully enjoys – is too short in light of the extraordinary erosion of the rights associated with the patent grant over the last 12 years. If an absolute maximum of 17 years of term versus life plus 70 made sense when patents were strong, what number for patents makes sense now that they are so weak and fragile?

If we want to continue to have any level of incentive for inventors, any hope for investors to be interested, Congress needs to consider lengthening the U.S. patent term to bring it more closely in line with the proportionate strength of the right inventors are being granted today.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments. Join the discussion.

  1. Anon August 30, 2017 11:00 am

    I would gladly settle for the current term length with more of a Trademark-style uncontestabiltiy aspect.

  2. angry dude August 30, 2017 1:25 pm

    R U kidding us ?

    It could be 100 years but who cares if patent is practically unenforceable ? (because of IPRs, PTAB, courts, cafc, scotus, potus etc etc)

    Just give me 5 years of enforceable term with criminal penalties for willful patent infringement

  3. Tom Lanni August 30, 2017 2:35 pm

    I would opt for a return to a more robust patent system rather than an extended term. The speed at which technology moves most patents have a short useful life as it is. The abomination that is the IPR has made patents virtually worthless. The PTAB in most cases does little or no real analysis and rely on pure hindsight in most cases to find obviousness. The other often overlooked factor is that the petitioner through the fees paid create a financial incentive to find in their favor. I have heard some say that these are all “bad patents” anyway. This is wrong on many levels. There may be some bad ones but not most. Most of the patents in IPR are involved in litigation. Most patents never get enforced for many reasons. This makes the kill rate almost preposterous. If there really are that many bad patents how about beefing up the examination process?

  4. Gene Quinn August 30, 2017 3:28 pm

    Tom-

    I would also prefer a return to a more robust patent system, but that doesn’t seem to be in the cards any time soon. Congress seems perfectly content with the direction the PTAB and the Courts are taking the system, so that really leaves limited options. If Congress will not fix the patent system they must provide for a much longer patent term in order to continue to have any hope of incentivizing innovators and investors on any acceptable level. Disgusting I know, but that is where the efficient infringer lobby has taken us.

  5. Pro se August 30, 2017 11:26 pm

    Design Patents, Software Copyrights, and Registered Trademarks are what I’ve been winning rights to in the last 2 years.. I will never go for a Utility Patent ever again after having the PTAB accept 10 references to institute my claims.

    Utility Patents are on the weakest and least valuable IP today on its last breath.. the SCOTUS will either rescue or kill off Utility Patents in Oil States..

    I would advise law students looking into IP law to wait until the SCOTUS rule in Oil States.. this will be the make or break for American Utility Patents.

  6. Martin L August 31, 2017 6:25 am

    I live in a world of easily-suppressed patent rights for those of us who can’t afford to use all of the legal tricks and tools to keep such rights secure. Why in the world would you want to give the power players in today’s world even stronger rights and more incentive to rid me of my rights that are already just a mirage?

    It’s like giving a bigger bat to a bully.

  7. Ely Erlich August 31, 2017 7:26 am

    Gene, I don’t think the term is the issue. It’s the prohibitive cost of enforcement coupled with lack of certainty of outcome.

    Patent litigation in Germany is a fraction of the cost and far more predictable.

  8. Bemused August 31, 2017 10:16 am

    Gene,

    I believe any proposal to extend patent terms would be met with significant resistance from not only tech but also from generic pharma companies. I also believe that Tom Lanni is correct that most patents have a limited useful life due to the speed of technological change.

    But here’s an alternative proposal: Any time (and by that I really mean every time) a patent is subjected to any form of post grant review (including ex parte reexaminations, IPRs, etc) the patent term get adjusted by the exact same amount of time the patent was in post-grant review.

    So, for example, Defendant A files petitions for IPR against my patent. The IPR lasts 18 months and I prevail (in whole or in part). Accordingly, my patent term is extended by 18 months. Defendant B files petitions for IPRS against my patent. The IPR and subsequent appeal to the CAFC lasts 26 months and I prevail. My patent term is extended by another 26 months. Etc, etc.

    There are equitable and practical reasons for wanting/getting patent term extensions due to post-grant reviews. First, as a practical matter, any time a post grant review is instituted, the district court will stay litigation. Even if you file a second lawsuit in a different district court, the defendant in the second lawsuit will seek (and almost certainly get) a stay because of the stay granted in the first lawsuit. This means that while your patent is in post-grant review, you’ve taken away the patent holder’s ability to license (monetize) their intellectual property. Isn’t it fair to give back that lost time/term to the patent holder who’s patent is upheld as being validly issued? After all, we’re told that we have a limited amount of time to seek and obtain damages after the patent is issued. Post-grant review can/does significantly contract that damages period.

    Second, post-verdict damages are very often enhanced due to the willful and ongoing nature of the infringement after a final decision that the patent at issue is both valid and infringed. By staying the district court action while post-grant review is going on, the time to get to a final decision of validity and infringement is significantly lengthened. Stated another way, post-grant review shortens the period of post-verdict enhanced damages.

    This prejudices the patent holder because of the delta between pre-suit (actual) damages and post-verdict (enhanced) damages. It is only fair to give the patent holder the same period of post-verdict (enhanced) damages they would have been entitled do but for the stay of litigation due to post-grant review.

    Hmmmm….wonder if any amici in Oil States thought of that issue? [And to anyone out there still working on their amicus brief, feel free to shamelessly appropriate this point for inclusion in your brief.]

    B

  9. Anon August 31, 2017 1:19 pm

    Bemused,

    Your proposal does not take into account a sense of “time value of money.”

    Typically (and I do permit exceptions), the ONLY time that patents actually gain in value over time it for Pharma. ALL other innovation art fields are the reverse.

    I would be more than disdainful of a “corrective mechanism” that played to the strength of Pharma at the cost of the rest of the innovation world.

  10. Bemused August 31, 2017 4:24 pm

    Anon,

    I don’t agree that the only time that patents gain value over time is for pharma. I’ve had clients with patents which saw a significant uptick in sales of accused (tech) products over time as the market adopted the patented technology. That resulted in significantly higher damages on the later years of the patent at issue.

    It also doesn’t account for the fact that a patent holder will get (usually) get post-verdict enhanced damages. So even if the damages curve stays flat (the same) throughout the entire life of the patent, the longer it takes to get to a verdict (due to district court stays pending post-grant reviews), the less time that is left for the enhanced damages period. Here’s an example:

    I sue Defendant A when my patent has ten years of term left. The average time to trial in the district where I filed is two years. That would mean (assuming I win at trial and at the CAFC), I should have enhanced post-verdict damages for eight years.

    However, if Defendant A files a petition for an IPR which results in a stay of the district court and the IPR eventually goes up on appeal to the CAFC, it make take me five years to get to a final verdict (three year stay due to the IPR and subsequent appeal PLUS two year district court litigation = five years). That means that I would be entitled to only five years of enhanced post-verdict damages instead of the eight years I would have been entitled to but for the stay pending IPR. The latter scenario gets even worse if multiple petitions for IPRs are filed thereby elongating the length of the stays pending IPRs.

    The salient point is that post-grant reviews chew up the time that is most valuable to a patent holder: the willful infringement/post-verdict term.

    B

  11. Anon August 31, 2017 6:57 pm

    a minor quibble, but I did say “Typically (and I do permit exceptions)

    I agree with you on the larger issue of chewed up time (and would even postulate that more than just the immediate time impact may be concerned – if one considers time of uncertainty as to ‘securedness’ of the property obtained with a patent grant).

  12. Bemused August 31, 2017 9:04 pm

    Valid point you make and it does implicate the bigger picture of the erosion of patent values due to the uncertainty of what exactly one has anymore with an issued patent.

    Like many readers/commentators on this blog, I’m optimistic that the pendulum will swing back to center but it concerns me greatly that we’re putting a lot of hope in a court (SCOTUS) which has rarely failed to disappoint/horrify patent holders with its ignorant decisions which show a complete lack of understanding about the bigger picture of how patents impact innovation, venture capital investment, the US economy, etc. And if SCOTUS takes the position in Oil States that patents, after all, are really public rights, then I’m not sure that patent values will ever recover.

  13. angry dude September 1, 2017 9:19 am

    Anon @9

    “..the ONLY time that patents actually gain in value over time it for Pharma. ALL other innovation art fields are the reverse.”

    This is complete and utter bs, dude
    Any fundamental tech patent (like US 4,405,829) gains value over time cause its usage (legal under patent license or illegal by efficient infringement) by the industry grows over time

  14. Anon September 1, 2017 11:12 am

    angry dude,

    Perhaps I should have been more clear about the span of time that I meant to be included in the notion of “over time.”

    I did NOT mean the early part of any innovation adoption curve, which of course has a generally positive slope.

    I DID mean that the slope does turn negative (and for some, sharply so) after a mere 5 to 8 years.

    So for MOST (again, see the previous caveat that there are exceptions***) innovations, adding protection at the end of 20 years is nigh meaningless.

    *** I would posit that the exceptions may include any totally game-changing disruptive innovations, upon which perhaps entire new fields may be built. Rather, I look to the fact that a large majority of patented inventions are of the improvement type.

  15. Steve Lyon September 3, 2017 9:09 am

    Gene, love the comparison of patent law vs. copyright. Copyright seems to have big advantages in proving infringement as well, with infringement being knowingly distributing a copy or one that is “substantially similar” to the orginal. Sure which that was the test for patented innovations. Also copyright violations carry criminal penalties (as we know by watching the beginning of any movie). Please continue this tact, patent law needs to be reformed with longer lengths, easier to prove infringement tests and criminal penalties. Comparing to copyright gives us a solid story with congress. Unfortunately, inventors don’t have the power of celebrity and big media that has historically helped copyright protections.

  16. American Cowboy September 5, 2017 10:58 am

    Maybe there is some hope to restore patent robustness, after all: https://arstechnica.com/tech-policy/2017/08/google-is-losing-allies-across-the-political-spectrum/

  17. Karen Stephens September 9, 2017 11:06 am

    A robust longer term for all patents, including life plus 70 years afterwards, would be amicable for everybody.

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