Are there requirements for my patent to remain valid after it has been issued?
All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant. Fee payments must include both patent and application numbers. If the fee is being paid for reissue, the application number required is the reissue application number. To access information on the current fees and costs associated with your patent, access the fee schedule.
How do I pay my maintenance fees?
There are 3 ways you may pay maintenance fees on your patent:
- Pay Online using a credit card, deposit account, or EFT account.
- Pay by Fax using a credit card or deposit account, and fax to 571-273-6500. If paying by fax, complete and submit the “Maintenance Fee Transmittal Form” and the “Credit Card Payment Form” (if paying with a credit card).
- Pay by Mail using a check or money order, credit card, or deposit account. If paying by mail, complete and submit the “Maintenance Fee Transmittal Form “ and the “Credit Card Payment Form” (if paying with a credit card).
What happens if I do not pay the maintenance fees?
If the maintenance fee is not paid within the required time period, the fee may still be paid within the grace period with an additional surcharge. The grace period is typically six months. Unless the maintenance fee and any applicable surcharge is paid within the required time periods, the patent will expire as of the end of the corresponding grace periods. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant. Maintenance fees cannot be paid in advance.
What if I forgot to pay the maintenance fees, can my patent rights be reinstated?
A payment of maintenance fees and any necessary surcharges will be considered to be late or insufficient include instances when:
(A) Though a payment was received, additional funds are required due to surcharge or fee increase;
(B) Though a payment was received in an amount for small entity, the patented file records do not indicate that an assertion of small entity status was received; or
(C) The payment was received after the patent expired.
If the Office considers a payment to be late or insufficient, a notice (e.g., a Notice of Non-Acceptance of Patent Maintenance Fee) will be sent to the “fee submitter.” Reply to the notice is required prior to the expiration of the grace period in order to avoid the expiration of the patent. If a reply is not received prior to the expiration of the patent, then an appropriate petition is required. See MPEP § 2580 and § 2590.
If no payment has been made prior to the expiration of a patent, maintenance fees due on a patent based on an expiration of the patent if, upon petition, may be accepted if the delay in payment of the maintenance fee is shown to the satisfaction of the Director of the Office to have been unavoidable or unintentional. The appropriate surcharge must be paid as a condition of accepting payment of the maintenance fee.
If the Director of the Office accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired but will be subject to the certain intervening rights and provisions, which are described in 35 U.S.C. 41(c)(2).
A patent may be reinstated at any time following the expiration of the patent for failure to timely pay a maintenance fee due to an unavoidable delay. A petition to accept late payment of a maintenance fee, where the delay was unavoidable, must include:
(A) the required maintenance fee;
(B) the surcharge for an unavoidably expired patent; and
(C) a showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and that the petition was filed promptly after the patentee was notified of, or otherwise became aware of, the expiration of the patent.
The required showing must enumerate the steps taken to ensure timely payment of the maintenance fee, the date and the manner in which patentee became aware of the expiration of the patent, and the steps taken to file the petition promptly. Furthermore, an adequate showing requires a statement by all persons with direct knowledge of the cause of the delay, setting forth the facts as they know them. Copies of all documentary evidence referred to in a statement should be furnished as exhibits to the statement.
A patent may be reinstated within 24 months after the 6-month grace period if the delay in payment is shown to the satisfaction of the Director of the Office to have been unintentional. See MPEP § 711.03(c) for a general discussion of the “unintentional” delay standard.
A petition filed under the unintentional standard must include:
(A) the required maintenance;
(B) the surcharge for an unintentionally expired patent; and
(C) a statement that the delay in payment of the maintenance fee was unintentional.
A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee. For example, a statement that the delay in payment of the maintenance fee was unintentional would not be proper when the patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the patent.