In the Recipe for Protection post series, we identified the different types of Intellectual Property: Patents (inventions); Trademarks (symbols, names and images) and Copyrights (literary and artistic works). In What you should know before you Reverse Engineer Grandma’s Mouth-Watering Oatmeal cookies we compared different kinds of IP.
These protections are an incentive to innovators or and inventors to share their works with the general public thereby fostering a healthy environment for creativity.
Creativity, Innovation, Invention, Experimentation
This *post will focus on the abandonment of a patent or and patent application.
Who may apply for a Patent? – An inventor or someone who the inventor has assigned or is under an obligation to assign the rights to their invention with certain exceptions, may apply for a patent. A patent has a term of 20 years absent any extensions and after that it abandons. Then what?
It all depends on if it is a Patent or a Patent Application at the time of abandonment.
- Abandoned Applications An abandoned application is one that is no longer pending and, therefore cannot mature into registration, that is before the patent issued, the application for a patent was abandoned.
- A patent application can abandon: because
- the Applicant failed to respond within a set time period to a USPTO (United States Patent and Trademark Office) notice or Office action issued by the Patent examiner OR
- if the owner/Applicant makes a formal request for abandonment.
If abandonment happens before the patent application is published, which occurs 18 months after the application is filed, the application will remain private and not enter the public domain.
- Abandoned or Expired Patent: A patent can expire due to failure to pay the maintenance fee. Unlike an abandoned patent application with certain exceptions, an abandoned patent can be revived at any time. There used to be a 24 month window from the date the fees were due but that is no longer the case.
- A request to revive would include a statement that the delay in paying the fee was unintentional.
- The revival of an abandoned patent may raise intervening rights issues and under certain circumstances there may be limited protections for the party practicing an invention claimed in an expired patent for failure to pay a maintenance fee in the time after the patent abandoned and before it was revived.
C) Searching for Abandoned Patents or Applications available to the Public
1) Search Google or 2)Search the World Intellectual Property Organization (WIPO) website or and 3) the United States Patent and Trademark Office (USPTO) website.
Creativity is the ability to think and act in ways that are new and novel. In our minds, there are two kinds of creativity, innovation and invention. Innovation is thinking creatively about something that already exists (e.g., the tape recorder, Walkman, and CD player are all innovations on the phonograph).
Invention is creating something that did not exist before (e.g. the phonograph). A business example illustrates the difference clearly. When a team bases its plans on the way the team has operated in the past, they are open only to innovation, such as increasing efficiency.
However, a team that is inventive will ask itself: Can we create a different way to operate, one that will produce a different way of doing business?
Experimentation is the process by which people become creative. When you experiment, you don’t know the outcome. You can only guess. Often, experimentation leads to a surprise — something you didn’t expect. This is the power of creativity
D) Public Domain
An invention that has been published for more than one year, is considered to be in the public domain.
If the patent term has NOT been extended, the invention becomes part of the public domain after 20 years, and anyone can use it.
When a patent on an invention expires or goes abandoned, the invention enters the public domain and can be commercially exploited by others.
Inventors sometimes may file a similar patent application or might have filed for a continuation and let the original patent expire. It is important that applicants conduct patent searches for similar inventions to protect themselves from potential infringement suits.
You may ask even if an abandoned patent is revived in the United States what havoc or harm could it possibly wreak for the infringer outside the United States for example in a far away place like Africa?
The Potential Reach of a Patent Owner’s Rights
Patent Cooperation Treaty (PCT) Application
– The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
Covers all countries or regions which are a party to the PCT on the day the PCT application is filed except for states that have been excluded or withdrawn. Most of the industrial countries are members. As of 2015 there are 148 members.
Patent Registration in Africa – The two regional organizations within Africa – African Regional Intellectual Property Organization (ARIPO) and Organisation Africaine de la Propriété Intellectuelle (OAPI).
1) African Regional Intellectual Property Organization (ARIPO) (English-speaking African countries). This regional organization conducts substantive examination based on consideration of the PCT international search report and the written opinion, together with substantive evaluation of the application by qualified examiners.
2) Organisation Africaine de la Propriété Intellectuelle (OAPI) is the office that receives and processes patent applications for French-speaking Africa.
An international patent application, in most cases can be filed with the national patent Office, or directly with the WIPO (World Intellectual Property Organization) if permitted by the Applicant’s country’s national security provisions. These two organizations act as PCT “receiving Offices”. (see http://www.wipo.int)
Based on these different associations between the organizations, an infringer could be held liable even for activities outside the United States relating to an active patent.
“If invention is a pebble tossed in the pond, innovation is the rippling effect that pebble causes. Someone has to toss the pebble. That’s the inventor.
Someone has to recognize the ripple will eventually become a wave. That’s the entrepreneur.”Entrepreneurs don’t stop at the water’s edge. They watch the ripples and spot the next big wave before it happens.
And it’s the act of anticipating and riding that “next big wave” that drives the innovative nature in every entrepreneur.”
– Tom Grasty – quoted in Business Insider.com
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