Home » Patents » Road to nowhere? When EP patent applications are still pending over 20 years from filing

Road to nowhere? When EP patent applications are still pending over 20 years from filing

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

epologoA patent is a legal right enabling the owner to stop someone else making use of an invention. Once granted a patent will provide the owner the exclusive right to prevent others from making, using, selling, importing or distributing the patented invention without permission for a period of up to 20 years from filing (assuming the renewal fees continue to be paid).

So far so good, right? But what happens when a patent application doesn’t make it to grant within the period of 20 years from filing? What happens then? And why would you still want to prosecute a patent application for 20 years anyway?

These aren’t just random theoretical questions but the questions some of us at IPcopy were asking ourselves last week when we caught sight of not one but two cases that were still pending more than 20 years from filing.

Curiosity suitably piqued, we did a little bit of investigation and discovered that the two cases were related and were actually both divisional applications filed from an application with a filing date in April 1994. These two divisional applications were themselves filed over 10 years ago. Both cases had recently issued examination reports with standard 4 month deadlines.

This scenario was a little unusual so we asked around to see what the procedure would be. The answer that came back was that examination would continue as normal until the case was refused or withdrawn. Reference was also made to the continued payment of maintenance fees but of course these two cases are now off the end of the scale as far as maintenance fees are concerned. The Applicant has paid over 20,000 Euros or so over the course of the life of the application but there are no more maintenance fees to pay since the EPO fee sheet stops at year 20 (we can’t help thinking you’re missing a trick here President Battistelli!).

So, the cases will continue it would seem. But why might you want to do this? Two reasons spring to mind. Firstly, if there was any suggestion that there might be an infringement occurring then it would be necessary to get the patent to grant before being able to enforce it. Secondly, there may be licensing arrangements in play. For example, an exclusive licence may extend beyond the expiry of the patent.

The two cases in question are in their 21st year. Have any readers come across cases that have been pending longer? What’s the longest that a case has been pending? Does anyone know or can anyone check?

And was the EPO aware of the wry smile that they probably caused when the representative read the examination report and was asked that “in order to expedite the procedure…..” he should make sure he addressed certain issues when responding to the exam report!

Mark Richardson 20 November 2014


4 Comments

  1. Infringment and related damages can be claimed after expiration of the patent for acts carried out before expiration and before Grant. In italy for example the retroactive term duration is of five years. Furthermore, an open examination proceeding and thus no definite claim wording is very Dangerous, since the competitors will feel unsure in inventing around and the patent owner has still the possibility of tailoring the claims on the product of the competitor. To me it seems quote a good competitive advantage

  2. Anonymous says:

    Take a look at EP0501781 – it was pending for over 20 years and it’s not even a divisional.

    EP2289517 (a divisional) was granted over 21 years after the filing date.

  3. Anonymous says:

    Of course, none of these are as impressive as Gilbert Hyatt’s US applications, some of which have been pending for 40+ years.

  4. Interesting about Hyatt. I hadn’t heard of him before but have just read this article from earlier this year – http://www.bloomberg.com/news/2014-02-24/inventor-waits-43-years-for-another-chance-to-shock-tech.html

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: