All intellectual property has some form of on-going maintenance needs to maximize the legal strength of any particular items such as a patent, trademark, copyright, trade secret, various forms of proprietary information, etc.  This is where the intellectual property liaison comes into play as being an individual who is involved with your technology on a daily basis to ensure all of the right activities are accomplished.    See “Portfolios” under the “General Intellectual Property” page for more information on the intellectual property liaison tasks. 

 

Looking specifically to patents, maintenance includes protecting yourself against the various attacks that can be made against the patent during infringement litigation that challenge the patent’s validity. 

When the patent is written care should be taken to meet all the requirements for patentability, such as adequate support in the description to make and use the invention, disclose the best mode and all alternative embodiments, and write the claims as broad as possible that would be allowed without amendment.  Amendments should be minimized as amended claim elements have a reduced scope of infringement coverage, see the “Patent Infringement” page for detail. 

 

Next, always have full disclosure to the U.S. Patent Office (USPTO) for all known prior art and be careful that Inventorship is correctly stated in the application.  Lack of candor with the USPTO on any issue related to patentability and all other information can subject the patent to invalidation.   

Maintenance fee payments to the USPTO, normally your patent attorney will docket these to be paid and send you a reminder, however, it would be wise as a backup for you to do the same, just in case something should happen over the years, with ownership transfers, etc.  The maintenance fees are due at 3, 7, and 11 years after the issue date with each one having a subsequent 6 month window to pay.  If the fee is not paid then the patent expires at that maintenance fee date.

Infringement watch, you must police your patent rights, track all infringement activity, and enforce your patent, to avoid the charge of latches or sleeping on your rights.  Also failure to bring an action against an infringer for an excessive amount of time can result in a reduction of damages available; see the “Patent Infringement” page for detail. 

 

Always keep an eye out for damaging prior art that you may not of known about during the filing and prosecution of your patent.  It is better for you to know about it sooner and assess the potential for harm against your patent validity, that to have an infringer surprise you with it later.

Be aware of anti trust risks, especially over time as companies are bought and sold, inadvertent monopolies can develop and expose you to the charge of “patent misuse”.   See “Anti trust” under “Intellectual Property Protection” for more detail.

 

Be careful that no implied representations are made to any potential or actual infringer that somehow permission is given, to say manufacture an infringing device.  This can happen inadvertently through the sale of a machine for example that can only perform the infringing process. 

 

Always ensure that proper public notice is given on the patented device either with the “patent number” or during pendency “patent pending” to not be subject to an infringer claiming innocent infringement, although this does not relieve the infringer of being guilty of infringement, is does have the potential for reducing the amount of damages awarded.