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I came across a product that I want to sell but when I found its patent through Google Patents, it says that the patent was canceled in 2015 because of no annual fee payment.

Now my concern is; can the patent owner revive the patent by paying the fee? If yes then how long will it take him to do so because the anticipated expiration of patent is two years from now (2021-11-11).

So if I start to sell this product, could the product come under patent protection again retroactively?

P.S: The product is patented in Japan only and I would be selling in the U.S but I believe the patent owner can file patent in the U.S. as well?

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It would be best if you were to list the actual patent number so we could check your interpretation. That said, if it is a Japanese patent and there is no US equivalent then it should not impact your ability to market a product in the US assuming you aren't manufacturing in Japan. It doesn't matter whether the Japanese patent has expired or not as patents are country specific. The patent owner cannot now file for a US patent on the same invention since the Japanese patent represents prior art.

While the specific Japanese patent shouldn't be a problem, it doesn't mean there aren't other patents which are. While you can and should do more patent searching on the specific technologies being employed, it might be a good idea to employ an actual patent attorney or agent to perform a "freedom-to-operate" assessment. At the very minimum, I would search under the inventor's name for US patents.

Update

The cited document JP3174302U is a Japanese utility model, not a patent. With regard to fees, the following quote comes from the Japan Patent Office.

(i) for patents

A patent right can be maintained by paying patent fees on an annual basis, starting with the fees for the fourth year. However, if the patent fee for a certain year is not paid within the deadline, a late payment equivalent to double the patent fees can be made if the late payment is paid within six months after the original deadline to pay has expired. If the late payment fee equivalent to double the patent fees is not paid within the within six-month period mentioned here, the patent right will be deemed to have expired as of the original expiration date.

Furthermore, when you, the patent-right holder, have a justifiable reason for not paying within the six-month grace period, i.e. where the Patent Office finds that your failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken, your patent right can be restored. In other words, you can pay the patent fee and the patent surcharge within two months after the date on which the justifiable reason ceased to exist, as long as this is done within one year after the six-month grace period expired. In doing so, you are required to submit also a document called Statement of Reasons for Restoration indicating the justifiable reason.

(ii) for utility models

The answer given for patents applies to utility models also.

According to Epacenet, the non-payment of fee happened on 2015/02/22. Since it is well past 1 year and six months, I don't think it is possible anymore to restore the status of the utility model. Just to be clear, I am not an attorney and this answer isn't legal advice.

  • Thank you so much, Eric, for your detailed response. Here it is "JP3174302U" Two Questions: 1. You mentioned a patent owner can't file patent in U.S as he has already filled in Japan. May I ask what's stopping him from doing that? I heard a patent owner can file a foreign patent in any country? What am I missing? 2. You mentioned there can be a patent for the product in the U.S. How is that possible if there is a prior patent in Japan? I mean if someone has only filed a patent in a specific country, so anyone can steal their invention and file a patent for it in other countries? – Adam Smith Oct 27 at 1:31
  • @AdamSmith You can only patent things that haven't already been invented. This includes things you have previously invented. In the case of patents, you usually have about 12 months to file in other countries if you are going to apply for patents of the same invention. Applications usually publish after 18 months. In this case The application was from 2012 so there is no way to file a new patent for the same thing as this application itself is considered prior art. – Eric Shain Oct 27 at 15:26
  • @AdamSmith As for your other question, I meant there can be other patents that are similar that you would have to worry about. If you look at Google Patent's page for this application, you will see references to 25 other documents several of which are US patents. patents.google.com/patent/JP3174302U/… – Eric Shain Oct 27 at 15:28
  • You are the man, Eric. I found a similar patent in the U.S by going through references of 25 patents. But, this patent was abandoned in 2007. What are your thoughts about it? Patent Link: patents.google.com/patent/US20060143830A1 – Adam Smith Oct 27 at 17:55
  • @AdamSmith Your linked document is an application, not a patent. It received a non-final rejection (not uncommon) in December of 2006. The applicant seems to have abandoned the application based on the feedback from the examiner. I looked at the file wrapper and the examiner found the application unpatentable over US5,572,757 in view of US6,578,218. You might want to review the cited and linked documents in the Google Patents page you found for more relevant patents. This is how patent searching works. One document leads to another, etc. – Eric Shain Oct 28 at 14:00
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No, it is not advisable. If the patent is expired due to the payment of fee, the patent holder can restore the patent by paying surcharge in addition to maintenance fee. Patent protection is a territorial right and therefore it is effective only within the territory of a country. Hence if there is a patent for an invention in one country and same invention does not have a patent in another country, you can sell the product in the country where there is no patent.

If you want to sell the product in same country where the patent is filed, you can buy and renew the patent which is expired due to fee payment.

  • Please see my edited answer. I don't believe it is possible at this point to restore the status of the Japanese Utility model. – Eric Shain Nov 30 at 16:42

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