I.P. Blog: New—Organization Critical for Patent Administrative House

By Jill StarbuckPellegrino & Associates

Patents can prove to be valuable assets to companies. However, patents have expiration dates. In fact, last year, nearly 12,800 patents expired among just 10 companies with the most patent expirations. While patent expirations may come as no surprise, it can be surprising to learn that some patents expire because patent owners neglect to pay maintenance fees. In these cases, the patents are considered abandoned. Last year, these same 10 companies abandoned nearly 8,000 of the expired patents for the year. While some of the patent owners may purposely let patents expire due to loss of validity and/or value, others inadvertently miss maintenance fee due dates.

How do patent owners inadvertently miss paying maintenance fees? Many times, issues begin with patent applications. Some of the biggest and common mistakes in filing patents are the frequency of typos, missing contact information, and failure to notify the USPTO of address changes. For example, over a five-year period one patent prosecution firm had its name listed 28 different ways across more than 400 patents it prosecuted.

The USPTO mails notices to patent owners regarding patent maintenance fees. If a patent owner neglects to notify the USPTO of an address change, or the address on file contains misspelled or missing information, then the notice may not reach the patent owner. By the time the patent owner realizes there is an issue, it may be too late to correct administrative problems. In such cases, a patent owner may lose all rights to a patent, which would then belong to the public domain. Therefore, simple filing mistakes can prove costly down the road.

In other cases, companies may have very large patent portfolios, making it difficult to keep up with hundreds or even thousands of maintenance fee dates. Staying organized and ensuring accurate information is filed are key to maintaining patent protection, which gives a patent owner enforceable legal rights to keep others from infringing on an invention. If a patent owner fails to pay maintenance fees, then the patent becomes public domain and anybody can practice the invention described in the patent without legal repercussions.

Fortunately, tools exist today to help patent owners keep track of patent portfolios. These tools can issue alerts notifying patent owners when maintenance fees are due. Furthermore, these tools can provide detailed patent information, even if a misspelling exists. IP Software, Inc., a firm focused on providing intellectual property (IP) analytical tools, offers such a tool called ipAnalytx. Known as the first true patent analytical platform, ipAnalytx provides key insights and intelligence into the patent landscape. This tool provides detailed information regarding abandoned patents, applications, expired patents, maintenancefees, and so much more to keep the administrative house in order. Patent owners can avoid thousands of inadvertent patent abandonments that take place each year by investing in IP analytical tools. To learn more about ipAnalytx, contact a representative today at 317.569.1313.

ICLEF • Indiana Continuing Legal Education Forum, Indianapolis, IN

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