To keep a utility patent in force at the United States Patent and Trademark Office (USPTO), the Patentee is required to pay patent maintenance fees at intervals of 3 1/2, 7 1/2, and 11 1/2 years from the date of the original patent grant. (see MPEP 2501 – Maintenance Fees) Additionally, the specific fee amounts ((980/2480/4110) - USPTO Fee Schedule) are reduced by 50% for parties which qualify for Small Entity Status and maintenance fees are not required for plant/design patents. (see USPTO Patent Rule | 37 CFR 1.362 – Time for Payment of Maintenance Fees)
Patent Maintenace Fees – Payment Periods
Payment of each of the maintenance fees is required within a specific “window period” (from 37 CFR 1.362):
“(d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and
(3) 11 years through 11 years and 6 months after grant for the third maintenance fee.”
Patent Maintenance Fees – Grace Periods
In addition to the aforementioned maintenance fee window periods, the Patentee is additionally provided with a grace period of 6 months after the maintenance fee due date (from 37 CFR 1.362):
“(e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.”
As indicated above, a maintenance fee paid within the 6-month grace period requires a surcharge (see USPTO Fee Schedule).
Failure to Pay Patent Maintenance Fees | Petition
If any of the patent maintenance fees are not paid within the aforementioned payment periods or grace periods, the patent will expire at either year 4, 8, or 12 (corresponding with failing to pay the first, second, or third maintenance fee payment, respectively). However, a Patentee may file a petition requesting that the Patent be reinstated. More specifically, 35 U.S.C. 41(c)(1) states that:
“The Director may accept the payment of any maintenance fee required by subsection (b) of this section which is made within twenty-four months after the six-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional, or at any time after the six-month grace period if the delay is shown to the satisfaction of the Director to have been unavoidable. The Director may require the payment of a surcharge as a condition of accepting payment of any maintenance fee after the six-month grace period. If the Director accepts payment of a maintenance fee after the six-month grace period, the patent shall be considered as not having expired at the end of the grace period.”
In view of the above, the Patentee must provide a showing (“to the satisfaction of the Director”) within the petition demonstrating that the delay with either unintentional (up to 24 months from the six-month grace period) or unavoidable (anytime). However, it should be noted that the filing of a petition does not guarantee that an expired patent will be reinstated.
Petition | Unintentional
For unintentional delay, the petition must include: 1) the required maintenance fee; 2) a surcharge; and 3) “a statement that the delay in payment of the maintenace fee was unintentional.” Further, the USPTO has a specific petition form: Petition to Accept Unintentionally Delayed payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)).
Petition | Unavoidable
For unavoidable delay, the petition must include: 1) the required maintenance fee; 2) a surcharge; and 3) a “showing” (as indicated hereafter):
“(b)(3) 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. Theshowing 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.”(from 37 CFR 1.378 – Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent).
As indicated above, a Patentee may file a Petition to Accept an Unavoidable Payment at anytime after the six-month grace period. However, it should be noted that the cost of this Petition is nearly double the cost of a Petition to Accept an Unintentional Payment ($1,640 vs. $700, respectively). Additionally, in contrast to the required showing for a Petition for Unintentional Delay (“a statement that the delay in payment of the maintenance fee was unintentional”) the factual showing here (Petition for Unavoidable Delay) is much more rigorous. In view of the foregoing, it should not be surprising that there is a substantial amount of authority (which is beyond the scope of this article) detailing “unavoidable delay.” Further, the USPTO has a specific Petition form: Petition to Accept Unavoidably Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b).
Public PAIR | Inspect Maintenance Fees for a Patent
The USPTO Public PAIR webpage allows one to view various maintenance fee particulars (maintenance fee payment periods, received maintenance fee payments, etc.) related to a specific patent. Once the Public PAIR page for the subject patent is brought up, the “Fees” tab launches a “Patent Maintenance Fees” page related to the subject patent.
For further information regarding USPTO patent maintenance fees, feel free to review the following USPTO Websites: USPTO Website – Maintain Your Patent/Pay Maintenance Fees and MPEP 2500 – Maintenance Fees.