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The Maintenance Fee Branch of the Receipts Accounting Division of the Office of Finance provides specialized advice and guidance to the public on maintenance fee matters.
The Maintenance Fee Branch determines the proper status of issued patents which are subject to payment of maintenance fees, receives and processes fee transmittals, updates entity status, responds to public inquiries on post-issuance status and maintenance fees, and determines if maintenance fees are timely and properly computed. This Branch also generates the data necessary to produce Official Gazette notices of maintenance fees due and of expiration of patents due to failure to pay maintenance fees.
The Office of Patent Application Processing (OPAP) updates patent post issuance automated files with the following information:
The official mailing address for submitting requests to update all post-issuance patent information is:
Director of the United States Patent and Trademark Office
Mail Stop Post Issue
P.O. Box 1450
Alexandria, Virginia 22313-1450
Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents and design patents. Furthermore, maintenance fees are required for a reissue patent unless the patent being reissued did not require maintenance fees. See subsection I below for more information regarding the payment of maintenance fees in reissue utility patents and original utility patents for which a reissue application is pending.
Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows:
The term of a utility patent that can be maintained in force by the payment of maintenance fees may be lengthened by any patent term extension under 35 U.S.C. 156 or adjustment under 35 U.S.C. 154, or may be reduced if there is any disclaimed term. Subject to the payment of maintenance fees and any patent term extension, adjustment, or disclaimer, the patent term begins on the date the patent issues and ends 20 years from the date the application was filed, or if the application claims the benefit of an earlier filed U.S. application or applications (excluding provisional applications), the patent term ends 20 years from the date the earliest such application was filed (hereafter, 20 year term). For utility and plant applications filed prior to June 8, 1995, the patent term is the greater of the 20 year term or 17 years from the patent issue date subject to any disclaimer or term extension.
Effective January 16, 2018, each reissue utility patent requires its own maintenance fee payment during the unexpired part of the term of the original patent (unless the original patent was filed before December 12, 1980). This practice requires a maintenance fee to be paid in each reissue patent in force on (i.e., issued before) the maintenance fee due date. This includes all reissue patents that replace the same original patent ("multiple reissued patents") and have maintenance fees due on or after January 16, 2018. This practice also includes a requirement for maintenance fee payments in original patents that are not surrendered because one or more reissue applications of the same original patent are still pending on the maintenance fee due date. In summary, for maintenance fees due on or after January 16, 2018, a separate payment of the maintenance fee is required for each reissue patent based on a single original patent, and for the original patent if there is a pending reissue application based on the same original patent, to maintain each reissue patent and the original patent in force beyond the 4th, 8th, or 12th anniversary of the grant date of the original patent. The due date for a maintenance fee is the last day the maintenance fee may be paid without a surcharge under 37 CFR 1.362(d). See MPEP § 2506 for more information on the times for submitting maintenance fee payments.
The former practice of requiring only one maintenance fee in the latest issued reissue patent for all reissue patents based on the same original patent and for the original patent was discontinued on January 16, 2018. Accordingly, maintenance fee payments that were due on January 15, 2018 were the last maintenance fees payable under the former practice. However, to ensure that all patentees have a six-month period to pay maintenance fees without a surcharge, the Office is establishing procedures for patentees to request a refund of the surcharge under 37 CFR 1.20(h) for payments submitted January 17, 2018, through July 16, 2018. The surcharge cannot be waived during the transition due to limitations in the automated processing system. The request for refund is limited to the surcharge accompanying the maintenance fee payments that are newly required by this change in practice (e.g., for patents in reissue patent families except for the latest reissue patent). See paragraph D below for more information on the refund of the surcharge under 37 CFR 1.20(h).
Effective January 16, 2018, each reissue patent of an original utility patent that was issued from an application filed on or after December 12, 1980 and that is in force on the relevant maintenance fee due date (i.e., the 3½, 7½, or 11½ year date) requires its own maintenance fee payment.
In some instances, more than one reissue patent will be granted to replace a single original patent. "Multiple reissued patents" that replace a single original patent are provided for in 35 U.S.C. 251(b). See MPEP § 1451. In these instances, each of the reissue utility patents requires payment of its own set of maintenance fees in order to prevent expiration of the reissue patent. The maintenance fee payment schedule established for the original patent continues to apply to each reissue patent such that the maintenance fee due dates are based on the date of the original patent grant. Based on the maintenance fee due dates, the time periods for paying maintenance fees in reissue utility patents are set forth in paragraphs (d) and (e) of 37 CFR 1.362. See MPEP § 2506 for more information on the times for submitting maintenance fee payments. To prevent expiration of any reissue patent, including each reissue patent based on a single original patent, any maintenance fee with a due date on or after January 16, 2018 must be paid in each reissue patent in force on the maintenance fee due date.
Effective January 16, 2018, the original patent requires a separate maintenance fee payment if at least one reissue application based on the original patent is pending on the maintenance fee due date (i.e., the 3½, 7½, or 11½ year date) even if a maintenance fee payment is made in reissue patent(s) that have issued from the same original patent.
35 U.S.C. 251 permits reissue only for "the unexpired part of the term of the original patent." An original patent is not surrendered under 35 U.S.C. 252 until a reissue application, based on the original patent, issues as a reissue patent and no other reissue application, based on the same original patent, is still pending. Because it is the granting of the reissue patent – and not the filing of the reissue application - that effectuates surrender of the original patent under 35 U.S.C. 252, maintenance fees remain due in the original patent whenever an application for reissue of the original patent is pending on the maintenance fee due date. Specifically, when one or more reissue patents have issued and at least one application for reissue of the same original patent remains pending, the original patent is not surrendered and maintenance fees remain due in the original patent until the last remaining reissue application issues as a reissue patent or becomes abandoned. In other words, while there is an application for reissue pending in a reissue patent family, maintenance fee payments will be required in both the original patent and the corresponding reissue patent(s).
A total of three applications were filed for reissue of the same original utility patent, which issued on August 27, 2010. The reissue applications result in first and second reissue patents granted on June 18, 2013 and June 25, 2013, respectively. The third reissue application based on the original patent is scheduled to issue as the third reissue patent on March 20, 2018 (after the February 27, 2018 due date for the 7½ year maintenance fee). The 3½ year maintenance fee, which was due on February 27, 2014, was paid in the second reissue patent on December 6, 2013, under the former practice that required only one set of maintenance fees in the latest issued reissue patent. The 7½ year maintenance fee due date is Tuesday, February 27, 2018, which is 7½ years after the August 27, 2010 issue date of the original patent.
The following steps are used to determine which patents in the patent family (i.e., the original patent and all reissue patents from the original patent) require payment of the 7½ year maintenance fee:
In this example, the patent family has two reissue patents and a pending reissue application. The 7½ year maintenance fee due date is February 27, 2018, which is after the January 16, 2018 effective date of the new practice set forth in this notice. Therefore, the new practice applies.
In this example, the first and second reissue patents were granted in June 2013 and remain in force on January 16, 2018. Therefore, to avoid expiration of the first and second reissue patents, the 7½ year maintenance fee must be separately paid in both the first and second reissue patents, regardless of whether the maintenance fee(s) are paid before, on, or after January 16, 2018. Note that if any of the required maintenance fee payments are made during the grace period beginning on February 28, 2018 and ending on August 27, 2018, the surcharge under 37 CFR 1.20(h) must be included with each maintenance fee payment made during the grace period.
The maintenance fee must be paid if the maintenance fee due date is before the date the original patent is surrendered (i.e., the date the last remaining application for reissue of the original patent issues as a reissue patent or becomes abandoned). Any time an application for reissue of the original patent is still pending on the maintenance fee due date, the maintenance fee must be paid in the original patent.
In this example, the third reissue application is still pending on the February 27, 2018 maintenance fee due date and is not scheduled to issue as a reissue patent until March 20, 2018. Therefore, the 7½ year maintenance fee must be paid in the original patent to avoid expiration of the third reissue patent. To avoid any uncertainty in the record about payment of the maintenance fee, payment should be made prior to March 20, 2018 because when the third reissue application issues as a reissue patent, the original patent is surrendered and ceases to exist. If the maintenance fee is paid on or after March 20, 2018, payment must still be made in the original patent because the maintenance fee was due before surrender of the original patent. In addition, if the 7½ year maintenance fee is paid during the grace period beginning on February 28, 2018 and ending on August 27, 2018, the maintenance fee payment must include the surcharge under 37 CFR 1.20(h).
In the example above, note that the 7½ year maintenance fee would be the first maintenance fee ever paid in both the original patent and the first reissue patent because the 3½ year maintenance fee was paid (four years ago) in only the second reissue patent under the former practice that required maintenance fee payment in only the latest issued reissue patent. Also, note that if the original utility patent, which issued on August 27, 2010 in the example, was instead issued on June 15, 2010, the 7½ year maintenance fee would be due prior to the January 16, 2018 effective date. In this situation, the 7½ year maintenance fee would only be due in the latest issued reissue patent under the former practice, even if the 7½ year maintenance fee and surcharge under 37 CFR 1.20(h) are paid on or after the January 16, 2018 effective date during the grace period.
To ensure that all patentees have a six-month period to pay maintenance fees without a surcharge, the Office is establishing procedures for patentees to request a refund of the surcharge under 37 CFR 1.20(h) for payments submitted January 16, 2018 through July 16, 2018. The request for refund is limited to the surcharge accompanying the maintenance fee payments that are newly required by this change in practice (e.g., for patents in reissue patent families except for the latest reissue patent). In other words, the new practice did not alter the requirement to pay the maintenance fees within the 37 CFR 1.362(d) or (e) time periods to avoid the expiration of a single reissue patent, the latest reissue patent in a reissue patent family, or the original patent when no reissue patent has issued. For these patents, any request for refund should not be made and will not be favorably considered if made.
To request a refund for the surcharge under 37 CFR 1.20(h), patentee must submit a letter that states the patent number(s) for which the maintenance fee(s) and surcharge(s) were made, the maintenance fee due date(s), the original payment date(s), the fee amount(s), the fee codes(s), and a brief explanation of why a refund is appropriate. In the brief explanation, patentees must explain why the maintenance fee payment is newly required by the change in practice and should make reference to the Official Gazette notice Original Utility Patents Not Surrendered by Reissue and All Reissue Patents in the Reissue Patent Family Require Separate Maintenance Fee Payments, 1446 OG 300 (January 30, 2018). For example, the brief explanation should identify the original patent, the reissue patents and any pending application(s) for reissue in the reissue patent family, any previously paid maintenance fees, and for which patents the maintenance fees were paid, if applicable. A request for refund must be made on or before January 16, 2019. The request for refund may be submitted via EFS-Web using document code PET.OP or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
Maintenance fees cannot be paid in advance since 35 U.S.C. 41(f) permits maintenance fees to be adjusted every year on October 1 to reflect any fluctuations during the previous 12 months in the Consumer Price Index as determined by the Secretary of Labor.
37 CFR 1.362(d) sets forth the time periods when the maintenance fees for a utility patent can be paid without surcharge. Those periods, referred to generally as the "window period," are the 6-month periods preceding each due date. The "due dates" are defined in 35 U.S.C. 41(b). The window periods are (1) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (2) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (3) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. A maintenance fee paid on the last day of a window period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted 3 years and 6 months, 7 years and 6 months, or 11 years and 6 months after grant of the patent.
37 CFR 1.362(e) sets forth the time periods when the maintenance fees for a utility patent can be paid with surcharge. Those periods, referred to generally as the "grace period," are the 6-month periods immediately following each due date. The grace periods are (1) 3 1/2 years and through the day of the 4th anniversary of the grant of the patent, (2) 7 1/2 years and through the day of the 8th anniversary of the grant of the patent and, (3) 11 1/2 years and through the day of the 12th anniversary of the grant of the patent. A maintenance fee may be paid with the surcharge on the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant to prevent the patent from expiring.
Maintenance fees for all reissue patents are due based upon the schedule established for the original utility patent. The filing of a request for ex parte or inter partes reexamination and/or the publication of a reexamination certificate does not alter the schedule of maintenance fee payments of the original patent.
If the day for paying a maintenance fee falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee may be paid on the next succeeding day that is not a Saturday, Sunday, or federal holiday. For example, if the window period for paying a maintenance fee without a surcharge ended on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee can be paid without surcharge on the next succeeding day that is not a Saturday, Sunday, or a federal holiday within the District of Columbia. Likewise, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee can be paid with surcharge on the next succeeding day that is not a Saturday, Sunday, or a federal holiday within the District of Columbia. In the latter situation, the failure to pay the maintenance fee and surcharge on the next succeeding day that is not a Saturday, Sunday, or a federal holiday within the District of Columbia will result in the patent expiring on a date (4, 8, or 12 years after the date of grant) earlier than the last date on which the maintenance fee and surcharge could be paid. This situation results from the provisions of 35 U.S.C. 21, but those provisions do not extend the expiration date of the patent if the maintenance fee and any required surcharge are not paid when required. For example, if the grace period for paying a maintenance fee with a surcharge ended on a Saturday, the maintenance fee and surcharge could be paid on the next succeeding business day, e.g., Monday, but the patent will have expired after midnight on Saturday (e.g., on Sunday) if the maintenance fee and surcharge were not paid on the following Monday. Therefore, if the maintenance fee and any applicable surcharge are not paid, the patent will expire as of the end of the grace period as listed above. A patent that expires for failure of payment will expire on the day following the anniversary date the patent was granted in the 4th, 8th, or 12th year after the grant.
A listing of available payment options and current mailing addresses is available on the USPTO website at www.uspto.gov/PatentMaintenanceFees.
Maintenance fee payments can be made quickly and easily over the internet at www.uspto.gov by electronic funds transfer (EFT), credit card or deposit account payment methods. Maintenance fee payments cannot be submitted by using EFS-Web. Maintenance fees paid online are through the Patent Maintenance Fees Storefront (www.uspto.gov/PatentMaintenanceFees ). See MPEP § 509 and § 2522 for additional information pertaining to payments by credit card and payments by deposit account. Payment receipts for all payments submitted over the internet are available immediately in the Patent Maintenance Fees Storefront after the payment is processed. Receipts for bulk file payments of maintenance fees will include a listing of accepted payments for each patent maintained in force as well as a listing of any payments that could not be accepted with an explanation why. Note that the bulk file payment option can only be done online using the Patent Maintenance Fees Storefront.
Maintenance fee payments not electronically submitted over the internet, and correspondence related to maintenance fees may be addressed to:
Mail Stop Maintenance Fee
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
For maintenance fee payments to be delivered by mail to the USPTO by a delivery service (e.g. Federal Express (Fed Ex), UPS, DHL, Laser, Action, Purolator, etc.), rather than by the United States Postal Service (USPS), the following address should be used instead:
United States Patent and Trademark Office
Mail Center, Mail Stop Maintenance Fee
401 Dulany Street, Suite 1A59
Alexandria, Virginia 22314
37 CFR 1.366(b) provides that the certificate of mailing procedures of 37 CFR 1.8 or the mailing by Priority Mail Express® provisions of 37 CFR 1.10 may be utilized in paying maintenance fees. The specific requirements of either 37 CFR 1.8 or 1.10 must be fully complied with if the benefits of either are desired. See MPEP § 512 and § 513.
Payment of a maintenance fee is accepted via facsimile to the fax number stated on the Maintenance Fee Transmittal Form (SB/45), when charged to a deposit account or to a credit card. Credit Card Payment Form (PTO-2038) should be used if payment is made by credit card. See MPEP § 509 and § 2522. In addition, requests pertaining to post-issuance documents, such as change of correspondence address, assignment of fee address, etc., may be submitted by facsimile.
37 CFR 1.366(b) provides that the certificate of transmission procedure of 37 CFR 1.8 may be utilized in paying maintenance fees. The specific requirements of 37 CFR 1.8 must be fully complied with if the benefits thereof are desired. See MPEP § 512.
Maintenance fee payments may be hand-carried to the Patent Customer Service Window in Room 1B11 of the Randolph Building, 401 Dulany Street, Alexandria, VA 22314. Although the receptionist will not process the maintenance fee payment, if the payment is delivered with an itemized postcard, the receptionist will provide a delivery receipt by date stamping the postcard. The maintenance fee payment should be placed in an envelope with MAINTENANCE FEE written in dark ink across the envelope.
37 CFR 1.366 establishes the guidelines and procedures for submission of maintenance fees, including any necessary surcharges. The patentee may pay maintenance fees and any necessary surcharges or any person or organization may pay maintenance fees and any necessary surcharges on behalf of the patentee without filing in the Office evidence of authorization by the patentee to pay maintenance fees. This will enable patentees to pay the maintenance fees and any necessary surcharges themselves or authorize some person or organization to pay maintenance fees and any necessary surcharges on their behalf. No verification of the authority to pay maintenance fees and any necessary surcharges in a particular patent will be made by the Office. While anyone may pay the maintenance fees and any necessary surcharges on a patent, if the payment is accepted by the Office, any Office notices relating to maintenance fees and any necessary surcharges will be mailed to the "fee address" set forth in 37 CFR 1.363. If the payment is not accepted by the Office, it will be returned to the person who submitted the payment if a return address is available. It is strongly recommended that the payor should include a return address along with his or her telephone number since the Office may contact the payor in some instances when it is unclear to which patent the fees are to be applied. See MPEP § 2530.
A maintenance fee and any necessary surcharge for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid, and at the proper time, i.e., within the periods set forth in 37 CFR 1.362. If the amount of the maintenance fee is correct on the date it is paid and credited to the patent, a later change in the maintenance fees to reflect a new fee amount will not require a modification in the amount paid.
37 CFR 1.366(c) provides that a maintenance fee payment must include the patent number and the application number on which the maintenance fee is being paid. If the payment includes identification of only the patent number (i.e., does not identify the application number for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment. See MPEP § 2530. The application number required to be submitted is not that of a prior parent application, but rather the application number of the actual application that matured into the patent for which maintenance fees are to be paid. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the application number required is that of the reissue application.
If a patent expires because the maintenance fee and any necessary surcharge have not been paid in the manner required by 37 CFR 1.366, the patentee could proceed under 37 CFR 1.378 (see MPEP § 2590), if appropriate, or could file a petition under 37 CFR 1.377 (see MPEP § 2580) within the period set therein seeking to have the maintenance fee accepted as timely even though not all of the required identifying data was present prior to expiration of the grace period.
Under 37 CFR 1.366(d), the following information should also be submitted for each patent on which a maintenance fee or surcharge is paid (37 CFR 1.366(d)):
Where the payment is a maintenance fee and any necessary surcharge on a reissue patent, in addition to the information requested for all payments, it is requested that the original patent number be furnished. Although the submission of the information requested under 37 CFR 1.366(d) is not mandatory, it would expedite the pr
