Article

Expired Patents: Wealth of knowledge

By Bindu Sharma, Patent Attorney, Origiin IP Solutions LL

A patent is a set of exclusive rights granted by a state (national government) to inventors or their assignee for a limited period of time in exchange for public disclosure of an invention. The word “patent” has been derived from a Latin word patere, which means “to lay open” (i.e., to make available for public inspection).

As patent gives exclusive rights to the inventor to prevent third parties from making, using, selling, offering for sale and importing the patented product in the jurisdictions where there is a patent protection. This means that as long as patent is in force, a patent shall not be used by any third parties without seeking permission of the patent holder. However, the term of a patent is usually 20 years from the date of filing and after which the patent expires and is no more in force.

Technically speaking, the patent, which has run its full term in a country and is no longer protected there, is called as an Expired Patent. Once the patent has expired, it cannot be renewed or restored.On cessation of the patent rights, which may happen due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection. It is supposed to be in public domain as prior art and patent fails to be in force.

It’s worth noting here that a patent might expire before completing the term of 20 years. If the patentee has missed renewal fee payment and fails to restore such lapsed patent within the prescribed time, it expires even though the term of 20 years is not complete. It is extremely important to accurately calculate the term of a patent and ensure legal status to confirm if it is an expired patent in a specific jurisdiction.

In India, the term of a patent is generally 20 years from the date of filing patent application, provided payment of renewal fee is done in time.However, the term of patent, in case of International applications filed under the Patent Cooperation Treaty designating India, shall be twenty years from the international filing date accorded under the PCT. The patent of addition expires on the same day as the main application irrespective of the date on which patent of addition was filed. Though main patent and patent of addition have same term, under certain circumstances, the patent of addition can be made as an independent patent, which needs to be checked carefully.The term of patent for a divisional application shall be twenty years from the date of filing of main application or international filing date, in case the application was divided out of National phase application under PCT. Thorough due-diligence is mandatory before using such expired patents in a given jurisdiction to minimize patent infringement risk.

Now, in case of pharmaceutical industry, several drugs go off-patent every year and the revenue loss for the patentee is huge. However, these off-patent drugs give liberty to the generic drug manufacturers, especially in the developing countries to manufacture and offer drugs at affordable price and over-the-counter accessibility. The World Generic Medicines Congress Europe 2015 indicates that drugs valued at $170 billion in annual sales go off patent in the year 2015.For example, Aripiprazole by Otsuka Pharmaceuticals, glatirame by TevaPharma, albuterol-ipratropium inhalation by BoehringerIngelheim, imatinibmesylate by Novartis, memantine HCI by Forrest Labs, etc. are some of the drugs for which the patents are going to be expired.

Primarily, due to importance of public health, even though pharmaceutical industry is the most talked about industry when it comes to usage of expired patents or manufacture of generic drugs, expired patents serve as a valuable source of knowledge for any industry. However, one needs to seek legal assistance and perform thorough due diligence before using such expired patents.