I’ve previously discussed patent maintenance fees in another blog post. Some of my clients choose to pay maintenance fees on their own. After all, it’s not difficult; all one needs to do is know their patent number and navigate the USPTO website to the Maintenance Fees Storefront.
Starting now, however, it’s slightly more burdensome to pay patent maintenance fees. The USPTO announced that a USPTO.gov account is required to pay these fees, which was not previously the case. While it is fairly simple to create a USPTO.gov account, it’s just one more step that must be done to keep a patent alive.
That being said, a good number of my clients have hired me to pay their patent maintenance fees (even before the new requirement) because they want to make sure it gets done correctly, which I am happy to do.
In previous blog posts, I’ve discussed patent maintenance fees and patent term adjustment, both of which may affect how long a patent may remain in force after issuance. In my experience, people seem to forget that not every patent survives up to its life expectancy due the failure of the patent holder to pay maintenance fees (and that some patents may outlive the typical patent lifespan because of patent term adjustment).
A recent blog post on Patently-O shows Dennis Crouch’s attempt to calculate how many patents are currently in force. He came up with 2.1 million. Thus, out of the roughly 8.2 million US patents that have been granted, about one quarter of them could still be asserted against accused infringers.
A patent is valid for twenty years after its filing date (plus any patent term adjustment granted as a result of USPTO delays, of course). However, a patent will expire before its twenty years are up if the patent owner fails to pay maintenance fees. When speaking with my clients, all of them exhibit awareness of the obvious initial costs to prepare, file, and prosecute a patent application. Many, however, are unaware of the continuing duties a patent holder has to pay maintenance fees.
This blog post introduces the concept of patent maintenance fees, including the amounts, when each payment is due, and the penalty for failure to pay required patent maintenance fees. As always, the discussion I provide in my blog posts remain general, and may not apply to your specific situation. If you have a question related to patent maintenance fees, talk to me or another qualified patent attorney.
Maintenance Fee Due Dates
Patent maintenance fee due dates are calculated from the day the patent is granted. The maintenance fees are due 3 ½, 7 ½, and 11 ½ years after the issue date. The PTO provides a six-month grace period after each of these due dates, but the patent owner must pay a surcharge if he pays the fee during the grace period. The chart below shows the fee amounts for each maintenance fee payment (both the normal fee and the small entity fee) and the surcharge amount for paying after the grace period has started:
Normal Fee
Small Entity Fee
Due at 3.5 years
$1,130
$565
Due at 7.5 years
$2,850
$1,425
Due at 11.5 years
$4,730
$2,365
Late payment surcharge
$150
$75
Current as of Jan. 23, 2012
As the table shows, maintenance fees get consecutively larger with each required payment. By the final payment, the amount is almost five times as much as the initial fees required when the patent application was initially submitted.
Reviving an Expired Patent
If the six month grace periods passes and no maintenance fee has been paid, the patent expires. As of that point, it is unenforceable—but not totally lost. The patent holder may petition to reinstate the patent–but must include with the petition a surcharge. The surcharge depends on how much time has passed since the deadline lapsed and whether the lapse was “unavoidable” ($700 fee) or “unintentional” ($1,640 fee).
A petition to reinstate a patent after an unavoidable delay must include proof that the delay in payment was unavoidable. A petition to reinstate a patent after an unintentional delay does not require a showing, but a statement that the delay was unintentional–but the unintentional petition is only available if made within two years of the end of the six month grace period.
The petition to reinstate must also include the proper maintenance fee, in addition to the surcharge.
Maintenance Fees Not Required for All Types of Patents
Utility patents, which are the most common type of patents, must be duly maintained by payment of maintenance fees as described in this blog post. Design and plant patent holders do not have to pay any maintenance fees–once a plant or design patent is granted, no further fees are typically necessary.
Conclusion
When an inventor is planning on seeking patent protection, she should consider the costs she will incur down the road when attempting to determine the value of a patent. Also she should take care to calendar the due dates for each maintenance fee payment, as missing a deadline can be rather costly.
