What To Do After My Patent Expires?

Well, it depends.

A patent is an important asset for any company and needs to be protected in order to maintain a competitive edge. This competitive edge cannot be retained without the protection of CIPO. But, patents come with an expiry date and the expiry can be due to two different scenarios.

Understanding the patent term in Canada

The patent term in Canada is different for patents that are filed on or after October 1, 1989 and different for patents filed before this date. The basic difference is that if a patent is filed after October 1, 1989, with the proper fees paid, then the patent carries a term of 20 years from the application filing date. For patent applications filed before October 1, 1989, the term carried is of 17 years from the patent issue date. Extension of a patent term is not possible in Canada.

Expiry due to unpaid maintenance fees

Maintenance fees are in place to make sure that the applicants, as well as the patent holders, keep re-evaluating their application’s and patent’s economic value on a yearly basis. As an owner of a patent who benefits from the system, you are required to pay the fees. If you don’t, your patent rights will expire before the maximum period of 20 years. As an owner of a patent, if you refuse to pay the fees, then your patent will lapse and the technology in those patents will be used freely by everybody. A maintenance fee keeps the patent protected. If you don’t pay the fees before the deadline, then the patent will lapse. In order to revive a lapsed patent, you will have to request for reinstatement. This has to be done with the payment of the maintenance fee, along with the payment of a late payment fee. The maintenance fees for the application must be paid before the starting date of the covered period. When the fee is not paid, the application becomes abandoned. Reinstatement can only happen within the 12-month period from abandonment. Failing to reinstate within that period will lead to the application not being revived.

Considerations when a patent expires

After the expiry of a patent, business of the patent owners might be adversely affected. This is due to the fact that the patent becomes accessible to everyone and can be used by them to make profit. In such a scenario, the patent owner should consider other ways to protect the IP of their relevant products and processes related to them. The patent owner could use protection of trademarks and industrial designs to enable protection of different aspects of the product. One important point to remember is that purely functional aspects can not be protected by Trade-marks and the Canadian jurisprudence has made this very clear. Similarly, the Industrial Design of the product is not capable of protecting any functional aspects; they can only protect the non-functional aspects of the product.

Patents are the ultimate protection for your assets. In case of expired patents after the 20-year period, there is nothing much that can be done. To understand more and get a better idea about the patent laws in Canada, get in touch with Prowse Chowne.