QUESTION

If my patent expires, can someone else re-file the exact same and claim it?

Asked on Jan 17th, 2013 on Patents - Massachusetts
More details to this question:
If yes, what happens to my current product that was governed by the patent that expired? Can I reclaim the patent?
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6 ANSWERS

Intellectual Property Attorney serving Irvine, CA at Shimokaji & Associates, P.C.
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Someone else may file a patent application on the same product and receive a patent, but that does not mean the patent is valid. Once your issued patent expires, it cannot be validly re-filed.
Answered on Jan 23rd, 2013 at 11:58 AM

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Licensing Attorney serving Portland, OR at Mark S. Hubert PC
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When it expires you lose the right to sue for infringement. However if your product has a distinctive look (that is not purely functional) or its packaging has a distinctive look that signifies the source to the buying public, then you can sue copycats under the Lanham Act for trade dress.
Answered on Jan 23rd, 2013 at 11:57 AM

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Acquisitions Attorney serving Lincoln, NE at Jayne L. Sebby
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Once a patent expires, the invention is available to anyone to use, improve upon, and/or sell. There is no way to "reclaim" a patent once it is beyond the term of protection.
Answered on Jan 18th, 2013 at 10:43 PM

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Appellate Attorney serving Seattle, WA at The Olmsted Law Group
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No. Your original patent is prior art and a new, identical patent application would be denied.
Answered on Jan 18th, 2013 at 10:42 PM

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The short answer is "no". More particularly, once a patent expires by exceeding patent term, or by failure to maintain its enforceability by paying any one of the three maintenance fees required during patent term, the subject matter disclosed in the patent is dedicated to the public and others are free from the threat of infringement litigation with regard to that particular patent. Because patents are public documents, and therefore "prior art" to other inventors that may subsequently file patent applications, no one can "re-file" a patent on exactly the same subject matter as disclosed in any existing patent, expired or otherwise, not even the original inventor. This is because any valid patent must be novel and nonobvious over the prior art. The prior expired patent prevents others from subsequently obtaining a patent for exactly the same invention which is already public knowledge, or "disclosed in the prior art". Thus, any attempt to refile a patent on the same subject matter would be rejected for lack of novelty. Regarding the current product that was formerly covered by the now expired patent, others may now copy, make, use and sell identical products assuming no other patent has claims that read on the "product". Again assuming no one else has a patent that covers your product, you are free to continue making, using and selling your product, but you may have new competitors that you cannot stop from copying. As always, you should consult a registered patent attorney to discuss the particular facts relating to your situation for a more complete analysis of your legal rights and obligations.
Answered on Jan 18th, 2013 at 10:42 PM

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Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
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NO - your patent is "prior art" to the new application - so the new application cannot claim to be "new." Even a minor change to your expired patent may not be granted a new patent - as the change might be "obvious.
Answered on Jan 18th, 2013 at 10:38 PM

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