Can a Patent Owner lose rights to his patent?
Go Back 
Can a Patent Owner lose rights to his patent? Video Transcript
In this section, I am going to discuss whether a patent owner can lose their patent rights. The answer is yes. Certain things that happened during the time the patent application was still being processed, that now is a patent, create fraud in the patent office. For example, if an inventor was not listed that should have been listed on the patent application before it was granted to a patent. So if someone has materially contributed to one of the invented concepts and their name was omitted on the patent application that now is a patent, that could be grounds to challenge the validity of the patent and render it invalid. Another thing is the failure to submit all known prior art under US law. During the prosecution of a patent application, the inventor or the applicant, which could be the company and even the attorney, has a duty to submit anything that they know of as material to patentability of the claims. So if there is any prior references, prior publications, anything like that, they have to submit that to the patent office. Failure to submit that information during the application process could render an issued patent later invalid if it is challenged in court. Similarly, any illegal conduct; if there was potentially an idea that was not original to the inventor, someone took the idea from some other inventors and said there is no patent on this idea, let me go file it myself. That is illegal conduct. Patents are granted to original inventors who use their own minds to come up with something new. The other area where one could lose their patent rights is if they fail to pay the maintenance fees. For issued patents, you have to pay maintenance fees after three years and seven years and 14 years, and if you do not pay those maintenance fees, the patent can become invalid and you could lose the patent rights that are associated. Sometimes, maintenance fees can be paid late to reinstate the patent, but the idea is once patents are issued, they are monopoly rights and the owner of the patent has a duty to pay those maintenance fees to keep the patent alive and enforceable. So these are some ways that a Patent Owner can lose their rights. But hopefully the idea is during the filing of the patent application and preparation, there is enough diligence and thought put through so that none of these issues occur. The other way patents can get invalidated is if they are challenged in court and someone finds that some other inventor somewhere in the world had a printed publication that disclosed the same thing that was filed and published before the application of the patent. Or in the US, at the date of the invention, the date of conception of the invention, if there was a publication that was out there that someone else wrote that was maybe perhaps never submitted to the patent office, not because of fraud but people may not have known about it, the inventor and the applicants did not know about it. In that case, if the patent is challenged during litigation, the patent might be invalidated. So there are a number of ways that patent owners can lose their rights. Certain ways they can control, such as making sure they submit all known prior art during prosecution, such as making sure that the inventorship is listed properly on the application during the prosecution. Also making sure that the maintenance fees are paid. And there are other ways that come back and bite the applicant or the owner of the patent, but it is generally rare. Patents enjoy a presumption of validity. So once the patent is issued, the test to challenge it changes from preponderance of the evidence to clear and convincing evidence. It is much a higher threshold in US courts and therefore the patent is presumed to be valid. There is a presumption of validity with granted patents.