Wednesday, October 7 2020

A Guide to Paying Patent Maintenance Fees

Traskbritt

The current enforceable period for a utility Patent is 20 years from the date of filing. However, in order to maintain the enforceability of your utility Patent, you must pay maintenance fees at regular intervals throughout the 20 year term of the Patent. Because the entire purpose of a Patent is to grant valuable enforceable rights, it is critical that these maintenance fees are paid while observing the correct protocol in order to avoid any lapse in enforceable rights. 

 

Who Can Pay

Maintenance fees and any other fees associated with them can be payed by the patentee themselves, but they can also be paid by another person or organization if the payment is on behalf of the patentee. 

 

What to Include in the Payment

In addition to the maintenance fee itself, the USPTO requires that the payment is accompanied by both the Patent number and corresponding application number. Additionally, any maintenance fee for a reissue Patent is required to be accompanied by the reissue Patent and application numbers. 

 

When to Pay

According to the USPTO Fee Schedule, maintenance fees can be payed (without surcharge) at 3-3.5 years, 7-7.5 years, and 11-11.5 years after the issue date for the Patent, but cannot be paid early. Additionally, you can pay with a surcharge with a six month grace period after the periods noted above (e.g., 3.5-4 years, 7.5-8 years, and 11.5-12 years after the issue date for the Patent). Furthermore, if a maintenance fee payment is below the required amount, it will not constitute payment of the maintenance fee on the Patent, which may lead to missing one of the above stated deadlines. 

These deadlines are critically important because, if a Patent owner fails to pay the sufficient maintenance fees by the end of the grace period, the Patent rights expire and the invention is essentially given to the public domain as the Patent is no longer enforceable. This means that the Patent owner will no longer be able to enforce the rights provided by the Patent, e.g., the right to prevent others from making and using the invention. Moreover, if a maintenance fee grace period deadline is missed, the Patent rights can only be reinstated if the delay in payment was unintentional, as discussed in more detail below. 

 

How Much to Pay

The current USPTO Fee Schedule indicates that the fees due at each maintenance interval are as follows:

  •  3-3.5 years: $1,600 for large entities and $800/$400 for small/micro entities.
    • 3.5-4 years: the amount above plus another $160 for large entities or $80/$40 for small/micro entities. 
  • 7-7.5 years: $3,600 for large entities and $1800/$900 for small/micro entities.
    • 7.5-8 years: the amount above plus another $160 for large entities or $80/$40 for small/micro entities. 
  • 11-11.5 years: $7,400 for large entities and $3,700/$1,850 for small/micro entities.
    • 11.5-12 years: the amount above plus another $160 for large entities or $80/$40 for small/micro entities.

You can view the current fee amounts on the USPTO Fee Schedule at the USPTO website. 

 

Where to Submit Payment

The USPTO lists four acceptable payment methods for a maintenance fee payment:

  1. Pay online: this is the USPTO’s preferred method of payment and can be done using either the Patent Maintenance Fees Storefront, a USPTO deposit account, or EFT (electronic funds transfer). The USPTO states not to submit payment via EFS-Web. 
  2. Pay by wire: a wire payment to the USPTO requires you to send the payment through the Federal Reserve Fedwire System and include the necessary information with the transfer (e.g., the maintenance fee, Patent number, and application number) in order to help identify the transaction and ensure a timely processing of the payment. 
  3. Pay by fax: Paying by fax only requires the completion of the Maintenance Fee Transmittal form along with the Credit Card Payment form (which are both available on the USPTO website), which should be faxed to 571-273-6500. 
  4. Pay by mail: in order to complete payment by mail, the Patentee is required to complete both the Maintenance Fee Transmittal form and the Credit Card Payment form and then send the forms in an envelope to the USPTO with the following address:

Director of the U.S. Patent and Trademark Office

Attn: Maintenance Fees

2051 Jamieson Avenue, Suite 300

Alexandria, VA 22314

The payment date will be the date that the mailed payment was actually received at the USPTO unless you use a certificate of mailing, follow the transmission procedure of 37 CFR 1.8, or the USPS Priority Mail Express procedure of 37 CFR 1.10. Accordingly, because the mail can have variable speeds for delivery, it may be risky to mail a maintenance fee payment close to the deadlines discussed above. 

 

How to Check the Current Status of a Patent

Information including bibliographic data, payment window dates, and fee amounts due for your Patent can be found on the Patent Maintenance Fees Storefront. Additionally, you can also download a Maintenance fee statement that clearly outlines the payment history of your Patent. Furthermore, the USPTO publishes the Official Gazette which contains weekly lists of Patents for which maintenance fees can be paid in addition to Patents that have expired due to missing a maintenance fee payment. By using these tools, you can avoid missing a maintenance fee payment and thereby ensure that your Patent will remain enforceable. 

 

How to Reinstate an Expired Patent if a Maintenance Fee was Missed

If a maintenance fee is missed and the enforceable rights of the Patent lapse, the only way to reinstate those rights is to file a petition for reinstatement of the Patent. However, reinstatement is not automatic and must comply with certain restrictions. 

First, a Petition for reinstatement of an expired Patent must be submitted by a “recognized party.” A recognized party includes a registered practitioner, a sole inventor who was the applicant or their legal representative, a single joint inventor with power of attorney, all of the joint inventors identified as the applicant, or an assignee identified as the applicant in an application filed on or after September 16, 2012. 

Second, the petition must include the following four items:

  1. The required maintenance fee
  2. The petition fee
  3. A statement stating that the delay in paying the maintenance fee was unintentional, and 
  4. A signature in compliance with 1.33(b)

Additionally, more information is required if the petition is more than 2 years past the last due date. This additional information is required in order to provide sufficient evidence and facts that show that the delay in paying the maintenance fee was unintentional.

If you have any questions regarding paying maintenance fees or reinstating an expired patent, get in contact with one of our Patent lawyers at TraskBritt today. 

Article written by David T. Ostler