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.
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.