The cheapest way to invalidate a patent
The cheapest way to invalidate a patent is to just watch it and let it lapse.
Half of all US patents will lapse at the 12 year mark, and the number will be significantly higher the longer you leave it. The numbers are higher in other jurisdictions where maintenance fees are payable each year.
So next time you identify a patent that looks to be of concern during a freedom to operate exercise, think carefully about the actual future date that you will be wanting to launch.
It may well be that you can wait it out a while before deciding whether to ‘invent around’ or develop an invalidity position for the patent. (And, sure, if you have the funds now, then go ahead and develop an invalidity position as well – but that’s not everyone at the moment…)
4 Comments on “The cheapest way to invalidate a patent”
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This is GREAT advice. It seems obvious, but not really. However, it is a bit fraught with risk, at least in the US. Here, “lapse” is not really complete until 2.5 years after the maintenance fee due date (fee payment grace period 2 years). While intervening rights are available during the grace period, the owner of the patent rights can still pay up the fees and sue if within the grace period. This is probable when they find out someone is “infringing” their lapsed patents. Unfortunately, intervening rights is an intensely fact-based issue, which means that expensive litigation can result if one uses a so-called “lapsed” patent too soon.
If one is willing to deal with this litigation risk, then the advice is very sound. I will note, however, that many outside US attorneys will certainly counsel for the freedom to operate opinion anyway, given the risk profile. I see this as more of a call made by strong business people who are accepting of such risk.
This is GREAT advice. It seems obvious, but not really. However, it is a bit fraught with risk, at least in the US. Here, “lapse” is not really complete until 2.5 years after the maintenance fee due date (fee payment grace period 2 years). While intervening rights are available during the grace period, the owner of the patent rights can still pay up the fees and sue if within the grace period. This is probable when they find out someone is “infringing” their lapsed patents. Unfortunately, intervening rights is an intensely fact-based issue, which means that expensive litigation can result if one uses a so-called “lapsed” patent too soon.
If one is willing to deal with this litigation risk, then the advice is very sound. I will note, however, that many outside US attorneys will certainly counsel for the freedom to operate opinion anyway, given the risk profile. I see this as more of a call made by strong business people who are accepting of such risk.
Great, Jackie, thanks for your great comments, as always.Just about every
jurisdiction has a grace period within which a patent can be revived
and timing is going to be everything. I really agree with your
sentiment that it is a business decision, like any other.I’ve seen a
few examples where a patentee who had started lapsing a patent family
was approached by a prospective licensee before lapses had been
completed. In many countries, it should be too late, because a ground
for revival in the grace period is a bona fide intent to continue with
the patent. But it’s surprising what actually will happen in these
circumstances. The prospective licensee should have waited or done some
more homework, and the patentee should have looked a little harder for
licensees before lapsing. (Though of course, understandable that they
could still miss each other due to confidentiality, etc).
Great, Jackie, thanks for your great comments, as always.Just about every
jurisdiction has a grace period within which a patent can be revived
and timing is going to be everything. I really agree with your
sentiment that it is a business decision, like any other.I’ve seen a
few examples where a patentee who had started lapsing a patent family
was approached by a prospective licensee before lapses had been
completed. In many countries, it should be too late, because a ground
for revival in the grace period is a bona fide intent to continue with
the patent. But it’s surprising what actually will happen in these
circumstances. The prospective licensee should have waited or done some
more homework, and the patentee should have looked a little harder for
licensees before lapsing. (Though of course, understandable that they
could still miss each other due to confidentiality, etc).