Brett Trout
For inventors and businesses, patents are crucial assets that protect innovations from being copied. But patents come with responsibilities—particularly the timely payment of maintenance fees. Failing to heed emails from your patent attorney regarding payment of these maintenance fees can result in the permanent loss of your patent rights, as demonstrated by the unfortunate case of Robert Taillefer and Sylvain Fredette, inventors of the Froster ice resurfacing machine?.
The Price of a Missed Email
Taillefer and Fredette’s Froster was a game-changer for maintaining the Rideau Canal Skateway, the world’s largest outdoor skating rink. They secured a patent in 2010, covering a novel ice-resurfacing machine. The machine is like a Zamboni® ice-resurfacing machine, but with two large retractable arms that allow the rapid resurfacing of ultra-large ice surfaces such as those found on lakes and rivers. Despite being granted this patent, they eventually lost the patent, not due to a legal battle, but due to their failure to pay the required maintenance fees to the patent office. Their patent agent even emailed them a reminder about the required payment, but the maintenance fee reminders from their patent agent landed in Taillefer’s junk email folder?.
For nearly a decade, Taillefer relied on email notifications from his patent agent to remind him of fee payments. But in 2019 and 2020, these critical reminders went unseen. When Taillefer failed to pay the maintenance fees, the patent expired. By the time Taillefer discovered the problem, it was too late to reinstate the patent. Although he appealed the expiry, the appellate court denied his appeal, finding that Taillefer not having a backup system for receiving emails regarding the maintenance fee payments was an accident waiting to happen.
Why Patent Maintenance Docketing is Essential
This case highlights the importance of a robust system for tracking patent maintenance deadlines. Here’s why having a patent attorney handle docketing is essential:
? Multiple Points of Contact – Patent attorneys have dedicated patent-specific docketing systems that ensure patent deadlines are monitored by multiple professionals, reducing the risk of oversight.
? Redundant Reminders – Patent attorneys use sophisticated software to track deadlines and send reminders through multiple channels, not just email.
? Legal Safeguards – If a lapse does occur, a patent attorney can quickly assess options for reinstatement and navigate legal proceedings.
? Global Portfolio Management – For inventors with patents in multiple jurisdictions, a patent attorney ensures that varying deadlines and requirements are met across countries.
Lessons for Patent Owners
Taillefer’s case serves as a warning: patent rights can be lost over something as simple as a misplaced email. To prevent similar situations, patent holders should:
? Work with a patent attorney who has a structured docketing system.
? Establish backup communication methods (e.g., phone calls, mail, or secondary contacts).
? Regularly check junk and spam folders for important legal notices.
? Ensure that your patent attorney has all of your most current contact information.
? Periodically check with your patent attorney, even after the patent is granted, to see if any action is required.
Don’t Let Your Patent Expire Due to a Preventable Error
If your invention is valuable, don’t take chances with its legal protection. Engage a patent lawyer to ensure that critical deadlines are managed properly. And make sure your patent lawyer has your most current email, physical address, and phone number. Losing a patent can mean losing a competitive edge—and potentially millions in revenue.
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