Beware of patents in the USA marcantonio-demo 15 July 2023

Beware of patents in the USA

Copyright concept with downtown Chicago cityscape skyscrapers

Very often economic operators who have the misfortune to be involved in a trial for alleged counterfeiting in the USA, are surprised (apart from the stratospheric costs, not even comparable to those in Europe) for the fact that the patents opposed to them seem to give rise to exclusives of much longer duration of the period of exclusive twenty years now substantially in force everywhere.

In reality – at least theoretically – it is not so. In the USA too, in fact, the duration of the patent is substantially (apart from some nuances that we cannot dwell on here) of twenty years. The fact is that, in that nation, is very widespread, first of all, the practice of the so-called “provisional applications“, that is to say, patent applications (whether or not accompanied by related claims) that have the sole purpose of allowing, within one year of their filing (and therefore before being published), the filing of other applications claiming the priority of the former.

The practice of so-called “continuations”, that is, applications claiming characteristics present in (but not claimed by) a previous application, filed before the latter is granted. And so, through the practice of filing a plurality of questions “continuation” (and therefore also of “continuation” of other “continuation“), European operators often find themselves in difficulty, because, deceived by the date of filing an application for “continuation“, perhaps relatively recently, believe that the patent is anticipated by the realization (and therefore by disclosure) of its own or others and do not realize instead that the first date to refer is that of the first filing in the USA (or perhaps the priority determined by a question “provisional”).

In fact, patent applications per se “continuation”, are not fundamentally very different from the “divisional” questions that European citizens are accustomed to, except that, in the US, this practice is extremely more widespread (and sometimes, in truth, also used in a way not entirely correct). It is therefore absolutely appropriate, when the patent position of one’s own competitor, or they make generic verifications of “green light” patent (c.d. “searches FTO”, acronym of freedom to operate), be assisted by an expert patent advisor who can immediately notice the temporal validity of patents “continuation” and then to alert the data subject accordingly. And this in the face of the strong need to avoid being involved in patent infringement cases in the USA, which – even regardless of the outcome – always involve very high costs and often completely unsustainable for Italian SMEs.