How to Pay a Late Patent Maintenance Fee

Is there such a thing as a patent renewal?

Sort of. The US does not call them patent renewals. Instead, they are called maintenance fees, and they apply only to utility patents. In particular, a US utility patent will have a series of payment deadlines in order to keep the granted patent alive. Depending on how tardy you are, it is possible to pay a late patent maintenance fee.

Need to pay a late patent maintenance fee? Contact Vic at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you maintain your utility patent.

Design patents, on the other hand, do not have maintenance fees. Design patents simply expire at the end of their 15-year term from the grant date.

So let’s look at how a late patent maintenance fee might be paid for a utility patent.

When are the patent maintenance fee deadlines?

Maintenance fee deadlines are counted from the grant date of the utility patent. A utility patent has three maintenance fee deadlines:

1. First maintenance fee due at 3 1/2 years;
2. Second maintenance fee due at 7 1/2 years; and
3. Third maintenance fee due at 11 1/2 years.

Basically, a utility patent will have “renewals” at 3.5 year, 7.5 year and 11.5 year anniversaries.

What is the grace period for paying a patent maintenance fee?

If you missed a maintenance fee deadline, you can still pay a late maintenance fee within a 6-month grace period after the deadline. A minor USPTO surcharge fee will apply. As of the date of this post, the 6-month surcharge for a small entity is only $250. You can look up patent maintenance fee details here. 

Suppose the 6-month grace period has passed. What are your options then?

Can you pay a late patent maintenance fee after the 6-month grace period?

Maybe. It depends on both the length of the delay and the reason for the delay.

After the 6-month surcharge period has passed, a petition to reinstate the expired patent may be filed if the entire delay was unintentional. In addition to the proper amount of the maintenance fee, you must also pay a petition fee which is currently $2,100 for a large entity, and $1,050 for small entity.

In most cases, the USPTO will accept a proper petition to reinstate the patent filed within two years of the date the patent expired for nonpayment. Such petitions filed within two years will likely avoid the need for further explanations.

If a patent has been expired for more than two years, the petition will likely require more effort and further explanations regarding the delay. For example, the USPTO may require the patentee to provide further explanations and information regarding the delay, including:

1. the reason(s) why the maintenance fee was not timely paid;
2. the date the patentee discovered the patent had expired;
3. how the patentee discovered the expiration of the patent; and
4. if the petition was not promptly filed after the discovery of the patent expiration, an explanation for the delay in filing the petition once the applicant became aware the patent had expired.

What is the additional cost of paying a late maintenance fee?

If you are within the 6-month grace period, then expect an additional $250 in USTPO fees for a small entity.

If more than 6 months have passed from your maintenance fee deadline, then must file a petition and pay the petition fee. Expect such costs to range from $1,600 to $2,000 in addition to the cost of paying the particular past due maintenance fee.

What examples of delay are not unintentional?

Certain decisions by a patentee causing delay may be intentional. Here are examples of abandoned patent applications that do not qualify as unintentional delay where the applicant:

• does not consider claims to be patentable over prior art references;
• does not consider allowable or patentable claims to be broad enough or to justify the financial expense of obtaining a patent;
• is interested in obtaining a patent, but simply seeks to defer patent fees and expenses; or
• does not consider the patent to be sufficiently valuable to justify financial expense of obtaining or maintaining the patent.

A change in circumstances that occurred subsequent to the abandonment of a patent or application does not make unintentional the delay resulting from a previous decision or deliberate course of action.

Need help with paying a late patent maintenance fee?

Email registered patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to request a flat rate estimate for paying for patent maintenance fee.