2590 Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent
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37 CFR 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
(b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:
(1) the required maintenance fee set forth in § 1.20(e) through (g);
(2) the petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Any petition under this section must be signed in compliance with § 1.33(b).
(d) Reconsideration of a decision refusing to accept a delayed maintenance fee may be obtained by filing a petition for reconsideration within two months of the decision, or such other time as set in the decision refusing to accept the delayed payment of the maintenance fee.
(e) If the delayed payment of the maintenance fee is not accepted, the maintenance fee will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed.
The Director of the Office may accept the payment of any maintenance fee due on a patent based on an expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director of the Office to have been unintentional.
- The appropriate petition fee must be paid as a condition of accepting payment of the maintenance fee.
- A statement that the delay in payment of the maintenance fee was unintentional is also required with respect to each delayed maintenance fee payment.
For applications filed on or after September 16, 2012, amendments and other papers must be signed by:
(1) a patent practitioner of record;
(2) a patent practitioner not of record who acts in a representative capacity; or
(3) the applicant.
Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
For applications filed prior to September 16, 2012, amendments and other papers must be signed by:
(1) A patent practitioner of record appointed in compliance;
(2) A patent practitioner not of record who acts in a representative capacity;
(3) An assignee as provided for; or
(4) All of the applicants for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application.
Revised effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner and therefore, unless otherwise specified, all papers submitted on behalf of a juristic entity on or after September 16, 2012 must be signed by a patent practitioner.
I. UNINTENTIONAL DELAY
The Director of the Office may accept late payment of any maintenance fee filed after the 6-month grace period, if the delay in payment is shown to the satisfaction of the Director of the Office to have been unintentional.
In addition to the timeliness deadline set forth in the preceding paragraph, a petition filed under the unintentional standard must include:
- (A) the required maintenance fee;
- (B) the petition fee; and
- (C) a statement that the delay in payment of the maintenance fee was unintentional.
A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee.
- For example, a statement that the delay in payment of the maintenance fee was unintentional would not be proper when the patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the patent.
The maintenance fee paid with a petition will be refunded when the petition is denied if the decision indicates that no further reconsideration or review will be undertaken, or upon request after the expiration of the time for filing a petition for reconsideration, if none is filed.
