While a patent term runs basically for twenty years from the date of
filing, an issued patent is definitely not a "file it and forget it"
proposition. The patent code, 35 U.S.C. S 41(b), provides for
maintenance fees that must be paid to keep a patent in force. A new
fee schedule is in effect as of January, 2003, and these fees are not
inconsiderable. Even more important, the penalties for missing
maintenance fees can be large.
A utility patent holder must pay issuance fees at 3 years and 6
months, 7 years and 6 months, and 11 years and 6 months after grant.
The fees currently range from $890 for the first maintenance fee to
$3150 for the last maintenance fee, with small entities paying half
those amounts. The fees are due on or before the date the maintenance
is due, although there is a six month grace period after the due
dates, during which time the maintenance fees can be paid with,
currently, a $130 (half for small entities) fee.
What happens if maintenance fees are not paid? The patent expires at
the end of the six month grace period! This is often where the real
trouble begins. If a patent holder intends to abandon the patent,
there is no harm, and often a financial savings, by not paying the
fee. However, if the holder wants to revive the patent after
expiration, he or she must then petition the Commissioner for revival.
There are two grounds for doing so.
If the patent holder can convince the Commissioner that the failure to
pay the maintenance fee was "unavoidable," the petition must be
accompanied by a fee of $700. There is no small entity discount on
such a petition. The USPTO applies a very high standard in defining
"unavoidable." A patent attorney can best advise only after reviewing
the facts of a case, but in general, the patent holder must have done
everything possible that a reasonable person would have done to get
the maintenance fees paid. Only a few cases will meet such a high
standard.
Failing such a case, the holder can petition for revival based on
"unintentional" failure to pay the maintenance fee. This is a much
lower standard, and generally means only that the holder did not
intend to abandon the patent, and that the failure to pay was an
oversight. It is important to note, however, that making a decision
not to pay the maintenance fee, and then later changing one's mind and
seeking to pay it, is not an "oversight." Once a patent has been
allowed to expire as a result of a conscious decision not to pay the
maintenance fee, it cannot be revived. As one might expect, the
petition fee for this lower standard of proof, "unintentional,"
scenario is much higher, currently $1640 with no small entity
discount.
There are other pitfalls. Petitions to accept late payment must be
made within 24 months of the expiration of the grace period for
payment. All maintenance fees and surcharges must be paid at the time
of petition; often a considerable sum. For example, a large entity
petitioning for revival after failure to pay the 11.5 year fee would
need to file their petition with a payment of $4,790! While petitions
based on "unintentional" situations are usually granted, there is no
requirement that the Commissioner must do so, so once an issued patent
expires, there is no guarantee that it can be revived.
Potentially an even greater burden is the possibility that the failure
to pay maintenance fees may have created so-called "intervening
rights." When a patent expires due to failure to pay maintenance, it
has fully expired, and the formerly patented device moves into the
public domain. If the commissioner grants the petition to accept late
payment, it is as though the patent never expired - with one important
exception.
A person who has begun making, selling, using, or importing the device
in question during the time after the expiration of the six month
grace period but before the acceptance of the petition to pay a late
maintenance fee, may have established "intervening rights" to their
activities.
35 U.S.C. S41(c)(2) provides that a person who has begun use during
that time period, or who even has made "substantial preparation" to do
so, may assert their reliance on the expiration as a defense to
infringement. The court may, in the interest of fairness, allow such
parties to continue their use, even if it otherwise would be blatant
infringement.
The moral of the story? Every patent holder is responsible to make
sure that maintenance fees are paid, and a failure to do so must be
regarded as a potentially irrevocable act.
Next month, we'll discuss trademark renewal applications and related
fees.
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