The defendants in a recent case in the United States District Court for the Eastern District of Texas argued that one of the patents in suit had died before it ever lived. According to the defendants, the patent expired not only before the case was filed, but before it was even issued, and thus it had no enforceable term. They asked the court to dismiss the allegations of infringement of that patent.
Can a patent expire before it issues?
Yes. It is not a common situation, but if a patent is issued more than 20 years after the earliest filing date to which it claims priority, and there is no term extension long enough to make up the difference, then the patent is dead on arrival.
This was the situation in the Texas case, Bartonfalls LLC v. Turner Broadcasting Sys., Inc., Case No. 2:16-cv-1127-JRG- RSP. The complaint in that case included allegations of infringement of U.S. Patent No. 9,094,694. The '694 patent issued from an application filed on July 1, 2014. It received no term extension, and it claims priority to an application filed on June 8, 1995, so pursuant to 35 U.S.C. § 154(a)(2) it expired on June 8, 2015. However, the '694 patent was not issued until July 28, 2015, six weeks after it had expired. Thus, the defendants argued, it never had any term at all.
The plaintiff responded by arguing that a patent must have some enforceable term, because otherwise the government's acceptance of issuance fees would be inequitable and an unlawful taking.
The district court disagreed, and granted the motion to dismiss:
If the statute were construed as Bartonfalls proposes, i.e., so that an expired-when-issued patent had some indefinite term extension past the ordinary twenty-year mark to be determined by the Court, then the public would have no notice as to when such patent term would end. Clearly, that cannot be the case. Equally clear, the fact that the government accepted fees from the patentee does not result in an inequity or a taking. Rather, it reflects a (perhaps misguided) decision to pay for a patent that would have no term under the terms of the statute. Whatever the reason, the public should not bear the burden of the patentee's questionable but intentional decision.38
Why would anyone ever pay the issue fee for a patent that had already expired?
The Texas court suggested that the "decision to pay for a patent that would have no term" was "questionable" and "perhaps misguided." But while that may have been true for Bartonfalls, it won't always be the case, because when a patent expires before it is issued, it is "only mostly dead. There's a big difference between mostly dead and all dead. Mostly dead is slightly alive."39
Such a patent is only "mostly dead" because a suit for infringement during the term of a patent is not a patent owner's only remedy. If the patent owner has been alert and careful during prosecution, it can sue to assert "provisional rights" over acts that took place before the patent was issued, regardless of when the patent expired.40 These rights apply only if the accused provisional-rights-violator had actual notice of the published application that led to the patent's issuance, and only if the issued claims are "substantially identical" to the claims in the published application. The only relief available for violation of provisional rights is a reasonable royalty, and it can be assessed only for acts that took place after actual notice and before the patent was issued.41
In the right case, then, it can not only make sense for a patent applicant to pay the issue fee for a patent that is already expired, but to hope for further delays before the patent is issued, thus extending the provisional–rights period. The patent will be mostly dead when it finally arrives, but it may also be slightly alive.
Footnotes
38 Bartonfalls, 2017 WL 1375205, at *1 (E.D. Tex. Mar. 15, 2017) (report and recommendation adopted by Gilstrap, J., on April 7, 2017, 2017 WL 1319656).
39 The Princess Bride (Act III Comms. 1987).
40 35 U.S.C. § 154(d).
41 See id.
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