Rebutting the Myth that Patents Last Too Long

By Gene Quinn
February 22, 2010

One of the main criticisms of patents by those who are not intimately familiar with patent law, or on the periphery of the industry, is that patents last too long.  The reality, if any generalizations could be made at all, is that the overwhelming majority of patents do not last “too long,” but if anything last for only a fleeting moment in the greater scheme of life. So while it is completely true to say that software and certain other high tech innovations should not be locked up for 20 years, the reality is that no patent provides 20 years of protection.  As a general rule the patent term can extend all the way to 20 years after the filing of a patent application, but you obtain no exclusive rights until a patent is issued, which is usually a minimum of several years after filing, sometimes much longer, as in the case of the recently issued TiVo patent that was issued more than 10 years after it was filed.  On top of that, to keep a patent in force you need to make additional payments over the course of the life of the patent, which is frequently not done.

Before June of 1995, the term of a utility or plant patent ended 17 years from the date of patent grant. To comply with Article 33 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement resulting from the Uruguay Round Agreements of the General Agreement on Tariffs and Trade (GATT), the United States was required to establish a minimum term for patent protection ending no earlier than 20 years from the date the application was filed. As a result, utility and plant patent applications filed on or after June 8, 1995, have a potential term that begins on the date the patent issues and ends on the date that is 20 years from the date on which the application for the patent was filed in the United States.  If the application that ultimately issues contains a specific reference to an earlier filed US or international application, the term potentially ends 20 years from the filing date of the earliest such application.  But this does not mean patents remain in force for 20 years.  As with so many things in patent law it is quite complicated and not susceptible to general rules.

It might come as a surprise to many, but the patent term is not necessarily always measured by 20 years from the date of the earliest applicable filing date.  With respect to utility patents issued on applications filed on or after December 12, 1980, maintenance fees are required to be paid in order to keep the patent term running.  Notice that maintenance fees are only due with respect to utility patents; maintenance fees are not required for plant patents and design patents. Likewise, maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees in the first place.

There are three maintenance fee payments that must be made in order to ensure the patent term remains in force and does not fall into the public domain.  These due dates are defined in 35 U.S.C. 41(b) and are 3 ½ years after the date of issuance, 7 ½ years after the date of issuance and 11 ½ years after the date of issuance.  37 CFR 1.362(d) sets forth the time periods when the maintenance fees for a utility patent can be paid without a surcharge. These periods are the 6-month periods preceding each due date.  If you miss this period you can pay the maintenance fee up to 6 months late, but you must pay both the maintenance fee and a surcharge.  So it is sometimes said that the window for payment of the first maintenance fee opens at 3 years after issuance and closes at 4 years after issuance.  Similarly the second window is between 7 to 8 years and the final window is between 11 and 12 years.  You can never pay a maintenance fee before the window opens, and if you miss the window the patent has gone abandoned and fallen into the public domain.  If you miss paying a maintenance fee through unavoidable or unintentional delay you can revive the patent, at least as a general rule, although there may be some lapse of rights.  So it is always best to not miss paying a maintenance fee if you want to keep the patent in force.

37 CFR 1.20(e)-(h) sets forth the payment required for the various maintenance fees. The maintenance fee amounts are also subject to a 50% reduction for small entities pursuant to 35 U.S.C. 41(h).  Currently, the maintenance fees are as follows:

First maintenance payment:            $980
Second maintenance payment:       $2,480
Third maintenance payment:           $4,110

The corresponding small entity reductions are as follows:

First maintenance payment:            $490
Second maintenance payment:       $1240
Third maintenance payment:           $2055

If a maintenance payment is not made by the due date the patent term is not necessarily over, as already discussed.  The surcharge for paying the maintenance fee in the grace period is $130, but small entities get a reduction to $65.

As you can see, the maintenance fees rise quickly, so if you are not making money on the patent you have to ask yourself whether it makes financial sense to continue to pay to keep the patent in force.  For this reason an extremely large number of patents fall into the public domain without enjoying the full term.  In fact, every week the USPTO publishes the Official Gazette and it includes notice of the patents that have expired for failure to pay maintenance fees.  For example, on February 16, 2010 the OG reported those patents that fell into the public domain between December 25 – 30, 2009 for failure to pay the appropriate maintenance fee.  There are 20 pages of patents that expired over that span for failure to pay the maintenance fee, and this is not at all uncommon.

So the next time you hear that the primary reason patents are bad is because they last too long, you will know that the truth and that such a statement is way over broad and really a mischaracterization of reality. Those patents that last for 12 years or more are the ones that are the most commercially relevant.  So the patents that enjoy the full available term are for those inventions that are the ones that we want most, and the very reason we have a patent system in the first place.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 6 Comments comments.

  1. Tarun February 23, 2010 7:47 am

    Thanks Gene
    nice article

    Do you have any reference or any article (about methodology or any software), which could guide step-by-step procedure to calculate patent expiry date. I mean there are lots of calculator on web but they require manual input and also does not consider Terminal Disclaimers etc.

    Your response will be highly appreciated.
    Thanks
    Tarun

  2. mike October 22, 2010 6:11 am

    So only the important patents last way too long… whew.

  3. Gene Quinn October 22, 2010 3:01 pm

    Mike-

    Not way too long at all. You should really do your homework and educate yourself. Patents provide incentive and without incentive inventors wouldn’t invent. That simple. Whew!

    -Gene

  4. mike October 23, 2010 3:16 am

    Patents are government monopolies.
    Why make them much longer than is needed to reward innovation? Big profits can be made in much less than two decades.

  5. Gene Quinn October 23, 2010 3:21 pm

    Mike-

    Once again you show your ignorance of the issue.

    Pharmaceutical and biotech inventions cost hundreds of millions of dollars to create, if not more than a billion dollars. So two decades of protection is critical, but there are at least two considerations further. Pharma and biotech inventions, while they enjoy patent protection for a term of 20 years from the filing date of the first application, typically only enjoy about 10 to 12 years of market exclusivity when you factor in FDA delay. On top of that, for every blockbuster drug there are at least 9 other failures. So when a blockbuster is encountered it needs to not only provide enough profit for the investors relative to the cost of creation, it needs to pay for the cost of creation of the other 9 failures as well.

    So you can pretend that patents are bad, but any objective observer knows otherwise. Without patents to reward innovation we wouldn’t have nearly as much innovation, and certainly no innovation that requires hundreds of millions or billions of dollars to bring into being. Just look at the Orphan Drug Act. After passage of the Act there has been a 1300% increase in drugs that treat rare diseases.

    So please, before you are going to pontificate get the facts straight.

    -Gene

  6. Ken March 9, 2013 5:07 pm

    Show me evidence where patents are an incentive to invent? The Internet for most of its early life was free of patents and there was an explosion of creativity. Now that patents have been introduced innovation has been severely hampered.

    To show that patents and copyrights for that matter are not necessary for innovation we have only to look at the fashion industry that has no copyrights on designs. It is a very vibrant industry and designers are free to practice their craft free of fear and expense of law-suits. Yes their designs are knocked-off but it is not a wide spread problem and consumers know what is original and what is a knock-off and tend to prefer the origina. In fact if clothing designs were copyrighted or patented clothing would be extremely expensive and our choices would be much less. There would also be less designers.