Tag: deadlines

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Divisional: How One Filing Can Create Two Expiration Dates

Really? Two Expiration Dates? Yes.

The Usual Sequence

The patent examiner declares in the First Office Action that there is more than a single invention disclosed in the parent patent application which allows the filing of a divisional. Before further examination, the examiner requires that the Applicant select a first invention for examination. This is known as a Restriction Requirement.

The Statutory Combo: 35 U.S.C. § 154(b) (PTA) + the § 121 Divisional Safe Harbor

This combination of statutory law allows the extension of a divisional patent application’s term beyond the parent’s twenty-year legal monopoly.

  • 35 U.S.C. § 154(b): Governs Patent Term Adjustment (PTA). As a result of USPTO delays in examination that exceed three years, the PTA adds “bonus life” to the patent term. (Note: Over the years, Business Patent Law, PLLC has seen extensions of four years or more.)
  • 35 U.S.C. § 121: This provides the “Safe Harbor” for divisional applications. It states that a divisional application filed because of a restriction requirement cannot be rejected based on the parent patent for double patenting.

How PTA Calculations Work

The PTA is calculated independently for each application. Depending on the USPTO’s specific delays, the parent and the divisional patent applications are eligible for different PTAs. Upon filing a divisional, its own PTA clock begins.

When a divisional application is filed because the examiner issued a restriction requirement, the USPTO cannot use the parent patent as a reference to reject the divisional for double patenting (and vice-versa). Since you aren’t forced to file a Terminal Disclaimer, every single day of PTA belongs to the owner of the divisional patent.

Turning a Restriction into an Enhanced Asset

  • Multiple Monopolies: In the IP world, distinct but similar inventions are a preferred way of doing business.
  • Stepped Expirations: Staggered expiration dates provided by a divisional make it much more difficult for competitors to “design around” or wait out your protection.
  • Mutually Beneficial: When innovation and engineering are symbiotic, we can precisely select which inventions should be maximized by the PTA and include several of those into the parent application to trigger the divisional process.
  • Too Much Of A Good Thing: Being overzealous can be detrimental if there are too many inventions flowing from the parent application.
  • Management’s Wisdom: Just because you can, does not mean you should. The “good ole days” of “submarine patents” are a vapor in time, but the divisional patent PTA is the law of the land today.

Business Patent Law, PLLC can assist your company with the strategic architecture of parent and divisional patent applications.

Ask Us Anything… about Intellectual Property!

Headquartered between Louisville and Lexington, Kentucky, Business Patent Law, PLLC serves a diverse range of clients—from innovative startups to successful clients of several decades. Our clients’ business interests means BPL’s practice spans across seventeen time zones.

Business Patent Law, PLLC provides intellectual property and business counsel. If you need assistance, please contact us today.

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Prepared by the Business Patent Law, PLLC, editorial staff. Counseling the Creative®

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Duration of a US Trademark Registration

The duration of a US Trademark or Service Mark is perpetual; provided the following conditions are met:

  • The United States Patent and Trademark Office (USPTO) granted a federal Registration of the Trademark or Service Mark
  • After registration, the Trademark/Service Mark is not canceled by the USPTO or court order
  • The required government fees are paid in timely manner
  • The required declarations of use are timely filed in USPTO
  • The required evidence of use in commerce regulated by Congress is timely filed in the USPTO

Timing Required to Maintain a Trademark

There is a specific timing of Required Fees, Declarations and Evidence needed to Maintain a US Trademark/Service Mark Registration in full force and effect:

15 U.S.C. §1058. Duration, affidavits and fees

(a) Time periods for required affidavits

Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:

(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 1062(c) of this title.

(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.

(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.

Illustrations of Timely Filings

To preserve the duration of a US Trademark Registration you must do the following:

  • Between fifth and sixth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
  • Between ninth and tenth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
  • Between nineteenth and twentieth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
  • ***Subsequent to the ninth year USPTO filings, every tenth year interval, i.e, 19, 29th, 39th, etc. from the registration date

If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.