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I am quite interested in trading card games and as a result the patent that Wizards of the Coast holds on the subject interests me. Since it's been about 20 years since the original trading card game (by Wizards of the Coast) was created, I was looking at whether the patent was still active.

First, I looked at US5662332 and USRE37957. Following the guide laid out here (and ignoring the reissue, since my understanding is that it does not change the term of the patent), I came to the conclusion that the patent was still valid till 17 October 2015 (20 years after 17 October 1995, which is after 8 June 1995).

However, Wizards recently sued Cryptozoic on the IP in question (though they are suing on Copyright, Trade dress and Patent infringement) and Cryptozoic response ran along the lines of "Now that their Patent has expired, WotC is being the corporate bully" (see here). This would suggest that this patent has in fact expired, contrary to my own conclusion.

So I looked at the patent again and saw that it was under also published as as CA2128634A1 and CA2128634C (one being the application and the other the grant). I think these must be Canadian patents because of the CA prefix. A little googling showed that for Canadian patents, I should also count 20 years from filing. Since this Canadian patent has the filing date of 22 July 1994, that would mean it expired last year. This conclusion lines up neatly with the other evidence.

So: What is the status of this patent. Has it expired in Canada while still being active in the United States? In other words: if I make a product that does things lined out in this product, am I correct in stating that I can sell it in Canada but cannot sell it in the U.S.?

Does the Patent Cooperation Treaty factor into this at all?

Community
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Jasper
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See patents are territorial rights means country by country basis. In US transition rule of 17 years after grant gave some patent extra protection beyond 20 years which created lot much of doubt in inventors.

Yes CA2128634 has expired in canada.

please check Canadian patent office register:- LINK

PCT application is just a window for extra time entry to other countries. if a inventor files a US patent he has only 12 months to enter every other country to make filing valid. If same inventor filed PCT first he has 30-31 months to enter other countries. Now you are right in some countries Expiry is calculated from PCT filing date not The priority filing date, in such country you get one extra year of protection. Like I said its territorial right one need to check relevant LAW and RULES to find out same.

Pushpak
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  • Thanks for the link, that definitely clears up part of the question. However, what I'm still wondering about is: does the Canadian expiration have any ramifications for validity of the U.S. patent? Or is the patent still valid in the United States? If so, how does the Patent Cooperation Treaty factor into this? (The PCT angle is a new one, so I'll add it to the question.) – Jasper May 29 '15 at 11:08
  • @Jasper answer updated to your query – Pushpak May 29 '15 at 11:22
  • Ah right, the PCT angle seems to have been based on a lack of understanding on my part. So, basically if I were to make a game that does things that the patent protects, I would be able to distribute it in non-North America (as I would have been e.g. 19 years ago) and in Canada (since 22 July 2014) but not in the U.S. (until 17 October 2015). – Jasper May 29 '15 at 11:26
  • Is the transition rule relevant here? The U.S. patent was filed after the transition period, so it would seem it is actually just the different filing dates that make the difference, not the transition rule. – Jasper May 29 '15 at 11:28
  • actually if you see closely US application is divisional patent filed in 1994 since its a divisional transition rule is not valid in present situation. – Pushpak May 29 '15 at 11:29
  • Could you add that last bit (U.S. patent is a divisional patent? I feel it's part of the question (I meant to ask). I also added the can I distribute it in country x angle in my question. – Jasper Jun 15 '15 at 11:58
  • Yes you can make in canada with respect to subject patent and sell in canada. you can export anywhere in world not in USA. KEY note is you have to make sure other patents apart from this are not infringed. – Pushpak Jun 15 '15 at 12:15
  • Sorry, I meant to say "could you add it to the answer". However, you've got me all confused now. Based on the statement that it was a divisional patent with a date over 20 years ago, I concluded the patent was expired in the US as well, but now you're saying the exact opposite... – Jasper Jun 16 '15 at 06:41