2504 Patents Subject to Maintenance Fees
|
Section Frequency Chart
| Key |
|
|||||
| 2504 |
(a) Maintenance fees as set forth in §§ 1.20(e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
(b) Maintenance fees are not required for any plant patents or for any design patents.
(c) The application filing dates for purposes of payment of maintenance fees are as follows:
(1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
(2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
(3) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
(4) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, [the] United States filing date of the original non-reissue application on which the patent reissued is based.
(5) For an international application which has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.
(d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and
(3) 11 years through 11 years and 6 months after grant for the third maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without surcharge set forth in paragraph (d) of this section, or the last day for paying a maintenance fee with surcharge set forth in paragraph (e) of this section, falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee and any necessary surcharge may be paid under paragraph (d) or paragraph (e) respectively on the next succeeding day which is not a Saturday, Sunday, or Federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is paid within the time periods set forth in paragraphs (d), (e) or (f) of this section, the patent will expire as of the end of the grace period set forth in paragraph (e) of this section. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant.
(h) The periods specified in §§ 1.362(d) and (e) with respect to a reissue application, including a continuing reissue application thereof, are counted from the date of grant of the original non-reissue application on which the reissued patent is based.
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.
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.
Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows:
- (A) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
- (B) For an application claiming benefit of an earlier foreign application, the actual United States filing date of the application.
- (C) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application, the actual United States filing date of the continuing application.
- (D) For a reissue application, including a continuing reissue application claiming the benefit of a reissue, the United States filing date of the original nonreissue application on which the patent reissued is based.
- (E) For an international application that has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under the Patent Cooperation Treaty which is considered to be the United States filing date.
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 or adjustment, or may be reduced if there is any disclaimed term.
I. REISSUE UTILITY PATENTS AND ORIGINAL UTILITY PATENTS FOR WHICH AN APPLICATION FOR REISSUE IS PENDING
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.
A. Maintenance Fee Payments for Multiple Reissued Utility Patents
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.
B. Maintenance Fee Payments for Original Utility Patents Not Surrendered by Reissue
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.
