Indiana Intellectual Property Law News
All utility patents that issued by the U.S. Patent and Trademark Office (“USPTO”) from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. Information regarding which patents are subject to maintenance fees and the time of payment for maintenance fees is found in Chapter 2500: Maintenance Fees of the Manual of Patent Examining Procedure.
Maintenance fees are due three times during the life of a patent, and may be paid without surcharge at:
• Three to three and a half years after the date of issue for the first payment;
• Seven to seven and a half years after the date of issue for the second payment; and
• 11 to 11 ½ years after the date of issue for the third and final payment.
Maintenance fees may be paid with a surcharge during the following “grace periods”:
• Three and a half years and through the day of the fourth anniversary of the grant of the patent;
• Seven and a half years and through the day of the eighth anniversary of the grant of the patent; and
• 11 ½ years and through the day of the 12th anniversary of the grant of the patent.
If the last day for paying a maintenance fee or any applicable surcharge falls on a Saturday, Sunday, or federal holiday, the fee may be paid on the succeeding day which is not a Saturday, Sunday, or federal holiday.
You may view the fee schedule for information on current fees and costs associated with your patent here.
Three Ways to Pay
All fee payments must include both patent and application numbers. If the fee is being paid for reissue, the application number required is the reissue application number. Patent maintenance fees may be paid by using one of the following three options:
• Visit the USPTO’s Office of Finance Online Shopping Page and use its secure online payment options, including using a credit card, a deposit account, or EFT payment methods.
• Pay the USPTO by fax using a credit card or deposit account. If paying by fax, complete the “Maintenance Fee Transmittal Form” and the “Credit Card Payment Form” (if paying with a credit card), and fax them to 571-273-6500.
• Send payments to the USPTO by mail using a check or money order, credit card, or deposit account. If paying by mail, complete and submit the “Maintenance Fee Transmittal Form” and the “Credit Card Payment Form” (if paying with a credit card).
Mailing address if paying with a check or money order:
U.S. Patent and Trademark Office
P.O. Box 979070St. Louis, MO 63197-9000
Mailing address if paying with a credit card or deposit account (or by hand delivery):
Director of the U.S. Patent and Trademark Office
Attn: Maintenance Fees
2051 Jamieson Avenue, Suite 300Alexandria, VA 22314
Note: A maintenance fee payment can be timely made using the certificate of mailing or transmission procedure set forth in 37 CFR 1.8, or the USPS Express Mail procedure set forth in 37 CFR 1.10.
Petitions for delayed payment of maintenance fees should be sent to the address below. An ePetition can also be filed via EFS-Web and may be automatically granted.
Mail Stop Petition
Commissioner for Patents
PO Box 1450Alexandria, VA 22313-1450
Please send correspondence related to maintenance fees that does NOT accompany a maintenance fee payment (e.g., entity status changes, fee address changes) to:
Director of the U.S. Patent and Trademark Office
Attn: Maintenance Fees
2051 Jamieson Avenue, Suite 300Alexandria, VA 22314
Updating the Entity Status
Maintenance fees are reduced by 50 or 75 percent if the owner of the invention qualifies as a small or micro entity, such as independent inventors, small businesses, or nonprofit organizations. A written assertion of entitlement to small entity status or certification of micro entity status must be filed prior to or at the time of paying a maintenance fee and signed by a recognized party. (See 37 CFR 1.27 and 1.33(b).). If you qualify, form SB/15A or SB/15B should be used to make a proper certification of micro entity status. Notification of a change in status resulting in a loss of entitlement to small or micro entity status must be filed prior to or at the time of paying the maintenance fee.
If you are paying a patent maintenance fee online and the entity status is not correct, send your entity status change request by using EFS-Web or by fax to the Maintenance Fee Branch at 571-273-6500. Please allow the USPTO enough time to receive and process your request before attempting to pay your maintenance fee. The requests are generally processed within 2-3 business days after receipt. If you are paying by mail, requests for updating the entity status should be submitted with your maintenance fee payment.
Checking the Maintenance Status of Your Patents
Bibliographic data and the fee amounts due for a specific patent are available through the Office of Finance Online Shopping Page. This information is also available through the USPTO’s Maintenance Fee Branch. To contact the Maintenance Fee Branch, call 571-272-6500. Select option #1, then option #1 again when prompted by the USPTO’s automated system.
Weekly lists of patents for which maintenance fees may now be paid and of patents expired for failure to pay maintenance fees are available through the Official Gazette Notices. Choose the year and week of interest, and select either the “Notice of Maintenance Fees Payable” or the “Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee” link, located near the top of the Web page.
Expiration for Failure to Pay Maintenance Fees
If the maintenance fee and any applicable surcharge are not paid, the patent will expire at the end of the applicable grace period as listed above. A patent that expires for failure of payment will expire on the anniversary date that the patent was granted in the fourth, eight, or 12th year after the grant of the patent.
You can verify the status of your patent with regard to the payment of maintenance fees online or by contacting the Maintenance Fee Branch at 571-272-6500.
The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an intellectual property attorney. If you have any questions or concerns about patent law, you should contact an Indiana patent lawyer.