Intro to Short Term Patents

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It would make sense that not all patents require the same duration of protection. Certain areas of technology may only be useful for short periods of time and the applicant may only be interested in paying for an appropriate protective term. On the other hand, other areas of technology may take a long time to arrive to market and therefore it could be argued that these technologies deserve protective extensions of term (we’ll get to these later). “Short Term Patents” is a catchall term within this post to refer to any by-design non-regular term patent (i.e. not ~20 years).

There are several different kinds of “short-term patents.” Often times these are under the category of “utility models”, although for example, the Irish Patent Office refers to them as “short-term” patents. Other patent offices that offer abbreviated/short-term/utility protection as an alternative to “regular” (usually around 20 year) patents include Japan and Germany (both countries have a strong tradition in this type of patent) as well as a number of other countries such as Ireland, Australia, France, and Taiwan. The general rule in such countries is that the applicant must choose to either pursue a utility model or a patent, per invention, but not cannot receive both.

Coverage for these kinds of patents has not always been strong, but now most major commercial patent search systems offer some level of coverage. Of note, PatBase has explicit coverage to most, if not all, forms of utility patents as well as short term patents and short term patent applications from Ireland. The Questel family of search systems, Thomson Innovation, MicroPatent PatentWeb, and others are known to have utility model coverage, at least.

On the other hand, Supplementary Protection Certificates (SPCs) are specific legal documents issued in the European Union to grant additional patent term length for medicinal patents–somewhat analogous to patent term extensions given by the United States Patent and Trademark Office. To learn more about SPCs, see the UK’s Patent Office primer (PDF), a history at Who’s Who Legal, and the very excellent SPC Blog which features a compact resource of related legal decisions and laws.

SPC coverage is available, since such data is part of INPADOC (the bibliographic database that most, if not all, commercial patent search systems employ). Again, PatBase help files explicitly detail some coverage for Supplementary Protection Certificates as well as applications for said certificates, but systems (such as the Questel family of search systems, which explicitly feature French SPCs—known as CCPs) may have comparable, although undisclosed, coverage.

Hopefully this was a helpful intro to “short term patents;” we hope to delve further into this topic at a later date. What do you think about the usefulness of these types of patent protection? Are you interested to find out further details of search system coverage in this area?

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Patent Searches from Landon IP

This post was contributed by Intellogist Team member Chris Jagalla.

11 Responses

  1. Nice overview.

    I just want to add that for Australia’s short-term patent, the Innovation Patent, full details should be available in all of the usual databases, including the IP Australia online records at http://pericles.ipaustralia.gov.au/ols/auspat/.

    Innovation patents have numbers in the same format as standard patents, and are distinguishable by the fifth digit of the application/patent number. Numbers of the form yyyy1nnnnn are innovation patents. (Standard patents are yyyy2nnnnn, and provisionals are yyyy9nnnnn.)

    It is important to look at family details for innovation patents. Due to their lower “inventiveness” threshold they have proven much harder to invalidate than standard patents, and many innovation patents have been divided from standard patent applications which may remain pending.

    While two patents may not be simultaneously granted for the same invention, a standard patent may be granted after an innovation patent has expired, or been voluntarily cancelled. A patentee may therefore gain the benefit of the “strong” innovation patent for much of its maximum 8-year term, before replacing it with a standard patent that may stay in force up until the end of the usual 20-year term.

  2. is there an equivalent to a short term pat in the US?

  3. Mark, thanks for the great comment! The numbering convention is a great reference for those of us who don’t often deal with Australian patents.

    By my understanding, it’s possible to keep the same standard patent application pending in Australia for 8 years before pushing it through to grant (and thus replace the innovation patent)?

    Setiri, there is not an equivalent to a short term patent in the US in terms of a utility model, but patent term extensions are available in certain circumstances (although not a separate legal document in the same way SPCs are). Perhaps I’ll touch on this sometime later.

  4. Chris – in most cases there would be no problem in keeping a standard Australian patent application pending for at least six years. In some cases, this might be long enough, but if not then it is possible to file a divisional standard application (performing much the same function as a US continuation) to maintain pending rights for the remainder of the innovation patent term.

  5. Interesting. In those countries where an inventor can choose between a utility model and a patent, what are the factors typically considered, other than technology? Does a utility model application have a lower filing fee / faster processing time / other aspects that make the shortened term of protection more attractive? In other words, what are the incentives to voluntarily limiting the life of the patent?

  6. Mark, thanks for the continued info!

    Arizona, utility model applications and fees do tend to be lower than a general patent as well as having faster processing time (due to the lower hurdle of inventiveness). See The Danish Patent and Trademark Office for an example.

  7. Hehe – yeah, bit of a mistype on “Arizona” there – I meant “US.”

  8. It’s great to see the PTO adopting more flexibility within the patent system, such as the three-track plan. I’ll be equally pleased if a day arrives when the USPTO starts to debate the potential merits of a system that offers different types of patents with different types of protection and varying terms. Such a system could, for instance, greatly benefit biotech and pharma, which often seem to need longer patent terms in order to adequately recoup their investments. Of course, I know that such ideas will likely remain on the horizon for the time being. But it’s never too soon to start the discussion.
    http://www.washingtontimes.com/news/2010/may/25/patent-reform-misses-the-mark/

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