Published 31/07/2018 by Marin Cionca
My patent expired? Can I still sue for patent infringement?
There are situations when a patent owner contemplates filing a patent infringement lawsuit after the patent expires. Is it too late to sue? Maybe not. The particular facts will have to be weighed against the legal doctrines of laches and equitable estoppel and against the statute of limitations applicable to patent infringement claims.
As known, in the United States, design patents expire 15 years after grant and utility patents expire 20 years after the effective filing data (i.e., the earliest of the actual filing date of the patent application and the earliest priority date claimed).
Let’s say that a patent expired 4 years ago. Is it too late to sue now? And if not, would it be worth it? Well, since the patent is now expired, an injunction and forward damages (i.e., for infringement occurring after the filing date of the infringement lawsuit) are not available. What about backward/pre-suit damages? Before March 21, 2017, the defense of laches asserted by the patent infringer may have derailed the effort to collect pre-suit damages, if the defendant could show that the patent owner unreasonably delayed enforcing its patent rights while the defendant continued to invest in the accused product, and, allowing patent enforcement now would prejudice the defendant.
That is not true anymore. That is according to the Supreme Court’s decision in SCA v. First Quality (SCA HYGIENE PRODUCTS AKTIEBOLAG ET AL. v. FIRST QUALITY BABY PRODUCTS, LLC, ET AL.) issued on March 21, 2017. A link to the entire court opinion is provided at the end of this blog.
In SCA, the Court held that “[l]aches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.” The period prescribed by §286 is 6 years (35 U.S. Code § 286: “Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action”).
Thus, in our scenario, the patent owner could still sue and could potentially recover 2 (6-4) years of damages, assuming that the doctrine of equitable estoppel would not apply. As known, the doctrine of equitable estoppel could bar recovery of any damages when the patent owner by its actions misled the accused infringer into believing that the patent will not be asserted against the defendant.
Thus, assuming that the equitable estoppel defense is not a concern, the patent owner could still sue, but if it is worth it or not, may depend on what were the sales of the infringer the 5th and the 6th years prior to filing the patent infringement lawsuit. If they were relatively small, let’s say about $200,000 a year, at a reasonable royalty rate of let’s say 7%, the maximum recovery would be $28,000 (assuming no willful infringement can be proven), and thus it may not be worth it, considering the high cost of patent infringement litigation.
While the defense of laches can no longer prevent recovery of damages for past infringement if the infringement occurred during the last 6 years, patent owners should assert their patents before the patents expire, to avoid losing years of past damages (i.e., 4 years in the above example). Further, in general, and especially if interacting with the accused infringer, care should be exercised, not to say or do something to mislead the infringer into believing that the patent would not be asserted.
SCA v. First Quality Opinion available at https://www.supremecourt.gov/opinions/16pdf/15-927_6j37.pdf
Diclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
staff9/15/2017 9:33:30 PM
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
Staff9/28/2017 7:27:22 PM
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About our IP law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution and opinion services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.