Professor Demchick's Blackboard

Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.

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KEEPING A PATENT IN FORCE

Patent rights eventually expire. A patent expires when its patent term is reached or when due maintenance fees are not paid.

Utility patents and plant patents usually have terms of 20 years from the date that the non-provisional application was filed. There are exceptions. For example, if the United States Patent and Trademark Office takes an unusually long time to handle the application, there can be a patent term extension.

Design patents have a term of 14 years from when the patent is issued.

There is no way to "renew" a patent.

Utility patents require the payment of maintenance fees to keep them in effect. Maintenance fees are due 3.5, 7.5 and 11.5 years after the patent issued. The earliest that maintenance fees may be paid is six months before the due date. Ideally, the fees are paid in the six months prior to the due date. Maintenance fees can be paid for six months after the due date, but there is a bit of a late fee. If the maintenance fees are not paid before the end of the six months after the due date, the patent expires.

It is sometimes possible to bring a patent that expired due to the lack of maintenance fee payment back from the dead, but only under quite limited circumstances, and only with the payment of a rather painful penalty. Even when a payment is possible after the expiration, the lapse can limit the rights of the patent holder. The bottom line is that if you are still interested in the patent, pay the maintenance fees on time.

There are no maintenance fees on design patents or plant patents.

Payment of maintenance fees is truly optional. A patent owner has no obligation to pay the fees. If a patent owner does not consider it worth paying the fee to keep the patent in force, the owner is allowed to not pay the fee. The nice thing is that the first maintenance typically comes due approximately five years after the application was filed. That means that the patent holder usually has a fairly good idea whether there is money to be made from the patent.

As of 23 August 2009, the maintenance fees for small entities were:

Due at 3.5 years $490.00

Due at 7.5 years $1240.00

Due at 11.5 years $2055.00

If I can be of service, please do not hesitate to contact me.