Patent Attorney and Founder
Alright! Maintenance! Right? That not-so-glamorous but oh-so-important part of patenting. This topic is kinda meant for patent owners, mainly because in order to want to click on this blog article, you would have some degree of interest in “maintenance fees” that prompted you to search for it or take interest on our website..
Not a patent owner? That’s okay too of course…but let’s change that, shall we? 🙂 Have an idea? Visit our website at www.boldip.com to sign up for my free book “Bold Ideas: The Inventor’s Guide to Patents” to get the basics, and then schedule your free 30 min advising session today.
Ok, all that sales stuff out of the way, let’s get to the content!
Quick note: This article pertains only to maintenance fees paid to the United States Patent and Trademark Office (and utility, design, and plant patent rights).
One of the COOLEST facts about patent maintenance law that I want to point out upfront is that for Design patents…. THERE ARE NO MAINTENANCE FEES!!! I know… they only get you 15 years of enforcement from date of issuance (as compared to utility patent’s 20 years from the filing date)… but that’s a huge perk, yeah? Plus… as you’ll see below, the fees can definitely add up.
While I would love to claim my knowledge comes from my work experience or from some law school course… it’s just not true. This type of information comes nearly 100% from the USPTO website. Therefore, I should (especially being an IP attorney) give credit where credit is due. The following are AMAZING resources that you should check out to see for yourself in addition to this article:
- Overall Patent Maintenance Process
- Where to actually go file/pay your Fee
- Post-Allowance Fees on the Fee Schedule
So, by utilizing the first reference as a guide, I’ve laid out the following FAQ quoting the USPTO and adding in my own words. Plus, I have provided some references/links below as well.
- Who can pay?
- What to include with payment?
- How much to pay?
- When to pay?
- Where to pay?
- What happens if you don’t pay?
- What notices get mailed/sent?
- Scams to avoid
- Patent Reissue Families
- Maintenance Fee Storefront
Who can pay?
You can! I can! Heck, your mother can.
As to be expected, payments are unrestricted. The USPTO is not particularly picky about who their fees come from. The important thing to them is that they get their payments on time and as expected.
Maintenance fees and any necessary surcharges may be paid by the patentee or by any person or organization on behalf of a patentee. This can especially come in handy when you have multiple business accounts and business partners involved.
Perhaps the best part of this is that it does save a little time and frustration with some of the more mundane and bureaucratic side of business. Time that isn’t spent making sure you yourself make every payment and prove your identity is time that can be spent running your business and inventing!
What to include with payment?
This is where we get a little more nuanced and orderly. While anyone can submit the payments, it’s important that all of the necessary elements are included.
Don’t forget to reference both the patent number and corresponding application number with your maintenance fee payment. For a reissue patent number, include the reissue application number. This ensures that they know the patent that is successfully paid for and that there won’t be any confusion or mix-ups.
You also have to account for company growth.Has your company grown at all? Hopefully, it has! This may mean, however, that your fees are not as discounted as they were when it was just you at the company… these same perks from the beginning can get a little tougher on the other side of the equation!
Here’s a link to entity status page to give you more guidance on how you can check up on the status of your patent and its respective payments.
If you have a change in entity status, make sure this is processed before attempting to pay online. If you are paying by fax or mail, submit your entity status request along with your maintenance fee payment.
How much do you pay?
There are a lot of different answers to this question depending on a lot of different variables, so it will vary depending on where you are in the process, the size of your business, and a number of other factors.
View the current fee amounts on the USPTO Fee Schedule. When you pay online, the fees due are automatically calculated based on the current entity status on file for your patent.
Adding it up… if you pay without surcharges, you will pay between $3,150 – $12,600. I know, that’s a pretty wide range, but luckily the USPTO website uses fairly simple charts that can make it easy to add up your specific costs.
Also, note that the fees do escalate over time. This is to accommodate for the entrepreneurial inventor who may be just starting up their monetization efforts for their invention and the USPTO cuts the costs upfront.
Also, as the time of enforceability goes up, the value that the patent is bringing in should be big enough so as to make the fee to keep it maintained enforceable. This means that while the number on your invoice may be higher, it should also be more manageable. It is designed with the inventor in mind, after all, and you’ll definitely be grateful for it when you first start out!
When do you pay?
You may pay without a surcharge at 3 to 3.5 years, 7 to 7.5 years, and 11 to 11.5 years after the date of issue.
You cannot pay early!!! How odd, right? This is likely because the USPTO wants to make sure you pay the fee when you are potentially a larger sized entity (and therefore have non-discounted fees).
You may also pay with a surcharge during the “grace periods” at 3.5 to 4 years, 7.5 to 8 years, and 11.5 to 12 years after the date of issue. Visit the Patent Maintenance Fees Storefront to view the payment window dates for your patent.
A maintenance fee and any necessary surcharge must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. Payment of less than the required amount will not constitute payment of a maintenance fee or surcharge on a patent.
If the last day for paying a maintenance fee without surcharge, or the last day for paying a maintenance fee with surcharge, falls on a Saturday, Sunday, or a federal holiday, the maintenance fee and any necessary surcharge may be paid on the next succeeding day that is not a Saturday, Sunday, or federal holiday.
Where do you submit payment?
The good news here is that there is some flexibility. The four main ways that you can pay are online, by wire, by fax, or by mail.
- Pay online (preferred method) – Pay immediately in the Patent Maintenance Fees Storefront with a credit or debit card, USPTO deposit account, or EFT. Do not submit the payment via EFS-Web.
- Pay by wire – See the instructions for sending a wire payment to the USPTO.
- Pay by fax – Complete the Maintenance Fee Transmittal form and Credit Card Payment Form (if paying with a credit or debit card), and fax to 571-273-6500.
- Pay by mail – Complete the Maintenance Fee Transmittal form and Credit Card Payment Form (if paying with a credit or debit card). Checks or money orders should be made payable to the “Director of the USPTO.” Mail to:
Director of the U.S. Patent and Trademark Office
Attn: Maintenance Fees
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
The payment date will be the actual date received at the USPTO unless you are using the certificate of mailing or transmission procedure set forth in 37 CFR 1.8, or the USPS Priority Mail Express procedure set forth in 37 CFR 1.10.
Online payments must be received prior to midnight Eastern Time on the last day of the payment window or surcharge period in order to avoid surcharge or expiration.
What happens if I don’t pay a maintenance fee?
This is definitely something you DON’T want to end up in… while they have grace periods and flexibility, they also get very serious very quickly if you disappear and fail to make your payments at all.
If maintenance fees and any applicable surcharges are not paid, the patent protection lapses and the rights provided by a patent are no longer enforceable. This can nullify all of your hard work that you put in to get a patent in the first place…It may seem intuitive, but the basic answer here is that you have to pay these maintenance fees if you want to use your patent as intended and properly protect your idea!
Mailed notices
It is the responsibility of the patentee to ensure maintenance fees and any applicable surcharges are paid in a timely manner to prevent the expiration of the patent. In addition to the patentee, the law firm that represents them is likely keeping a close eye on any/all USPTO correspondence including maintenance fee notices.
If the maintenance fee is not paid within the first six months in the year in which it can be paid, a Maintenance Fee Reminder notice is sent to the fee address or correspondence address on record.
If the maintenance fee and any applicable surcharge are not paid by the end of the 4th, 8th, or 12th years after the date of issue, the patent rights lapse and a Notice of Patent Expiration is sent to the fee address or correspondence address on record.
Failure to receive the notices will not shift the burden of monitoring the time for paying a maintenance fee from the patentee to the USPTO. If a fee address has not been established, the notices are sent to the correspondence address.
SCAM ALERT: there are numerous companies unaffiliated with the USPTO that send solicitations to patent owners concerning maintenance requirements. See the warning about non-USPTO solicitations for more information to avoid potential scams.
Reissue patent families
Effective January 16, 2018, there are changes for maintaining in force individual patents in reissue patent families. See the Official Gazette notice and the frequently asked questions (FAQs) for more information about the change.
Expiration dates
Generally, utility patents expire after 20 years from the application filing date subject to the payment of appropriate maintenance fees.
The USPTO does not calculate the expiration dates for patents. In response to patent owner and public inquiry, the USPTO provides a downloadable patent term calculator as a resource to help the public estimate the expiration date of a patent. See the Patent Term Calculator page for more information.
Patent Maintenance Fees Storefront
The Patent Maintenance Fees Storefront is the USPTO’s online search and payment tool for patent maintenance fees. Any user may access this site as a guest to view or pay fees, but signed in uspto.gov registered users will have access to additional features. Check out the Video Introduction to the Patent Maintenance Fees Storefront to learn more.
Here’s the current webpage:
In Summary
In summary, if you are just getting started on the patent process, or if you have an issued patent and still have more questions about patent maintenance fees, please don’t be shy to schedule a free advising session today. Or submit a question to info@boldip.com, we’d be happy to help you.
To recap the gist of maintenance fees, today we discussed:
- Who can pay?
- What to include with payment?
- How much to pay?
- When to pay?
- Where to pay?
- What happens if you don’t pay?
- What notices get mailed/sent?
- Scams to avoid
- Patent Reissue Families
- Maintenance Fee Storefront
Did you have your maintenance fee questions answered? Are you still a little confused on the details? Let us know!
Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.