Patent Attorney and Founder
For many of our clients, patent renewal fees are often an afterthought. The process of getting an invention patented is a daunting one, so it makes sense to focus on the all-important approval first. The idea of renewal fees can seem like a distant possibility!
However, if you work with the right attorney, then you’ll increase your chance of patent clearance—and, of course, making sure your patent is renewed regularly. There’s more to keeping a patent active than just money, though. Here’s a summary of patent renewal fees and everything else that happens after you get your patent.
These fees are pretty straightforward. Information on your patent application will be used to determine your size, and your deadline is based on your grant date. However, it can be a bit tricky to know which category you fall into—large, small, or micro entity.
- Micro entity: To get micro entity status, a business must be a USPTO-defined small entity with a maximum qualifying gross income of no more than $202,563. Micro entity also applies to patents related to higher education. A person who obtains most of their income from higher education or one who assigns their interest to such an organization can get micro entity status.
- Small: Many organizations (and individuals) will fall into small entity status. If the company is either a nonprofit or has less than 500 employees, they may qualify. However, they will lose small entity status if patent rights are assigned or transferred to a large entity.
- Large: Large entities are any businesses that do not fall into the micro or small entity category.
These categories matter because they don’t just apply to renewal fees; they apply to just about all fees related to the patent, beginning with the initial application.
Surcharges will also be due if you miss the deadline to submit your renewal fee. Maintenance fees can be paid for a period of six months prior to the due date. After that, you’ll enter a six-month grace period where you’ll have to pay the fee plus the surcharge.
Many new inventors are so excited about the issuance of their patents that they forget to plan for the future. Patent maintenance comes as an afterthought. In the best-case scenario, inventors only contend with increased costs. In the worst, they lose their IP protection.
Patent Renewal Fees and When to Pay Then
The first thing to know about patent maintenance fees is that they don’t apply to all patents. Utility patents or patents that protect the function of something are subject to patent maintenance fees. However, design and plant patents are not.
Utility patent renewal fees can change both on the size of the business and how long the patent is held. Here’s a basic breakdown of patent maintenance fees and when they’re due. 
These fees are pretty straightforward. Information on your patent application will be used to determine your size, and your deadline is based on your grant date. However, it can be a bit tricky to know which category you fall into—large, small, or micro entity.
- Micro entity: To get micro entity status, a business must be a USPTO-defined small entity with a maximum qualifying gross income of no more than $202,563. Micro entity also applies to patents related to higher education. A person who obtains most of their income from higher education or one who assigns their interest to such an organization can get micro entity status.
- Small: Many organizations (and individuals) will fall into small entity status. If the company is either a nonprofit or has less than 500 employees, they may qualify. However, they will lose small entity status if patent rights are assigned or transferred to a large entity.
- Large: Large entities are any businesses that do not fall into the micro or small entity category.
These categories matter because they don’t just apply to renewal fees; they apply to just about all fees related to the patent, beginning with the initial application.
Surcharges will also be due if you miss the deadline to submit your renewal fee. Maintenance fees can be paid for a period of six months prior to the due date. After that, you’ll enter a six-month grace period where you’ll have to pay the fee plus the surcharge.
Many new inventors are so excited about the issuance of their patents that they forget to plan for the future. Patent maintenance comes as an afterthought. In the best-case scenario, inventors only contend with increased costs. In the worst, they lose their IP protection.
What Else Does It Take to Keep a Patent Active?
Failing to pay maintenance fees on time for a patent can cause the loss of your IP protection. While there are ways to reopen a patent that lapses due to non-payment, typically, you have to show good reason. It’s best to stay on top of these renewal deadlines, which can be tricky for those without a legal background.
Also, there can be severe consequences for paying as the wrong type of entity. A business that starts as a micro entity may expand and qualify as a small or even large entity. In that case, you must update your entity status when the maintenance fee comes due.
Another thing to keep in mind is how much you can change your product and still consider it protected. Changes to a patented device that aren’t purely cosmetic may trigger the need for new protection. Keep detailed records of your development process and check with an attorney when in doubt.
It’s wise to work with an attorney for the entire journey, from the initial application right through to your 11.5-year patent renewal fees. An expert firm can provide ongoing maintenance of a patent and keep you apprised of crucial deadlines, so there are no surprises as you protect your IP for its entire lifetime.
Bold Patents can help with patent renewal fees as well as all the other tasks to keep your patent current. Reach out to us online or call 800-849-1913 for more information.