Patent maintenance fees are compulsory fees that you must pay to the United States Patent and Trademark Office (USPTO) at certain junctures after a utility patent has been issued to keep it active. Maintenance fees are not required for design patents, however, so before you apply for a patent, it is imperative to understand the difference between utility and design patents.
Here are some common questions about patent maintenance fees.
When are Patent Maintenance Fees Due?
Patent maintenance fees are due on all issued utility patents at the following junctures:
- 3.5 years after the grant
- 7.5 years after the grant
- 11.5 years after the grant
Fees can be paid at most 6 months before the due date. If you fail to pay the fee by the deadline, you will have a grace period of 6 months to make the payment. If payment has not been made by the end of these 6 months, the patent will expire. USPTO directors may require you to pay a surcharge if your payment is made during the 6-month grace period.
How Do I Reinstate a Patent After Failing to Pay the Fees?
If you can show that your delay in payment was unintentional, you may be able to reinstate ownership over your patent, provided you pay the missed maintenance fee. To reinstate your patent, you must submit a statement that shows that the delay was unintentional and include the maintenance fees that you owe and the fee for filing your petition.
Can I Get Out of Paying Patent Maintenance Fees?
No. While the answer to this may seem obvious, we do hear of people who try to skirt the payment of patent maintenance fees. However, it is never a good idea to try to avoid paying patent maintenance fees. The only time it would make sense to not pay a patent maintenance fee would be if you decide that the cost of maintaining your patent justifies losing your right to enforce it.
What is the Difference Between Small Entity and Large Entity Fees?
For small entities, maintenance fees are reduced by 50%. Small entities are defined by USPTO as small businesses, independent investors, or non-profit organizations. If you are a small business however, there are additional criteria you would have to meet before you can attain “small entity” categorization:
- You must not have more than 500 employees
- You should not have been assigned, granted, conveyed, or licensed any rights to the invention to anyone who cannot be classed as an independent inventor, or to any entity which does not qualify as a non-profit organization or a small business.
The language surrounding patent maintenance fees can be tricky to navigate, and the process itself can be equally difficult. At Practus, utility and design patent protection are one of our key practice areas. Get in touch with us today to find out how Practus can help you in your patent process.
