While a great deal of attention is given to the process and benefits of obtaining a patent, one should not simply let a patent term expire with little or no thought given to the potential consequences. A patent grants the patentee the exclusive right to make, construct, use and sell an invention for the term of the patent. However, the exclusive nature of this right comes to an end when the patent's term expires, at which point the invention covered by the patent may be freely exercised by the public. Several issues relating to patent expiration should be considered by patent owners and licensees in order to effectively manage their overall IP portfolio. There are also important considerations for third parties interested in a patented invention which will soon be available to the public.
Patent term in Canada. For applications filed on or after October 1, 1989, assuming the proper fees are paid, a Canadian patent has a term of 20 years from the application filing date. For patent applications filed before October 1, 1989, the term is the later of 17 years from the patent issue date or 20 years from the filing date. A patent term cannot be extended in Canada.
Considerations for patent owners and licensees. When a patent expires, the business of patent owners and licensees will immediately be affected by the ability of third parties to practice the patented invention. However, a patent owner should consider options for maintaining relevant intellectual property protection of their products and processes.
While each individual patent is temporary, maintaining a relevant and up-to-date patent portfolio may provide extended protection for key technology. For example, as advancements are made in technology claimed by a patent, a patentee may consider whether any such improvements can be claimed in a new patent application. The Canadian Patent Act defines an invention as "any new and useful art, process, machine, manufacture or composition of matter and any new and useful improvement" thereof (emphasis added). When a patent expires, a third party may use the formerly patented invention, but continues to be excluded from using any improvement that is the subject of a valid patent still in force. Another possibility is that if a new use for an old compound is discovered, the new use may be independently patentable.
A patentee should also consider whether other types of intellectual property protection, such as a trademark or industrial design, are available to protect products covered by expiring patents. Trademark or industrial design protection covers different aspects of a product than a patent. A trademark is a mark which distinguishes wares or services, and a trademark registration may be renewed indefinitely. Patents protect functional aspects of a product and Canadian jurisprudence has held that purely functional features cannot be protected by a trademark. However, a patentee may consider applying for a trademark registration in respect of non-functional aspects of a patented product.
Similarly, an industrial design registration does not protect utilitarian aspects, but may protect non-functional, aesthetic aspects of a product. An industrial design is defined in the Canadian Industrial Design Act as "features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye." An industrial design has a term of 10 years from the registration date of the design. A design cannot be registered if it has been available to the public more than one year before an application is filed. Thus, long-established aesthetic features of a product covered by an expiring patent may not form the basis of a new industrial design registration. However, a new look for a product may be eligible to be registered as an industrial design.
Owners and licensees of Canadian patents should monitor their patent marking practices to ensure that products are not marked with expired patent numbers or marked as being patented if no patents covering the product are still in force. There is no requirement in Canada to mark products as being patented. However, it is an offence under section 75 of the Canadian Patent Act if one "with intent to deceive the public offers for sale as patented in Canada any article not patented in Canada" (emphasis added).
A licensee practicing a patented invention under the patent owner should keep track of the date on which a patent expires to ensure that licenses are not needlessly extended beyond the term of the patent.
Considerations for third parties/competitors. As described above, when a patent expires, the public gains the right to make, use and sell the invention covered by the patent. Thus, the expiration of a patent presents an opportunity for a third party competitor. However, before exercising an invention that was formerly protected by a patent, a third party should consider whether a contemplated product or process would infringe any other patents that are still in force. For example, when a patent expires, a third party may want to perform a search of patents in the same field of technology and/or of other patents owned by the patentee. Third parties should also consider whether the patentee has any other types of intellectual property protection, such as trademarks or industrial designs, in respect of patented products.
Third parties should also be aware that corresponding patents in different jurisdictions may have different expiration dates. Thus, when a Canadian patent expires, the relevant invention may still be subject to patent protection in other countries, thereby impacting the third party’s ability to make, use or sell the invention in those countries.