Forgot to Pay the Patent Maintenance Fee: Options to Revive a Patent

After a US utility patent is granted, maintenance fees must be paid at certain intervals. This post will discuss some of the rule that currently apply to maintenance fees.

Patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. The fees can be paid in the 6 month window before the deadline, that is between 3 years and 3 1/2 years, between 7 years and 7 1/2 years, and between 11 years and 11 1/2 years, respectively. See MPEP 2506.

If you don’t pay the maintenance fee by the deadline, you can pay it in the 6 month period (“the surcharge period”) after the deadline by paying an additional surcharge fee. Therefore, the surcharge periods are between 3 1/2 years and 4 years, between 7 1/2 years and 8 years, and between 11 1/2 years and 12 years, respectively.

If you fail to pay the maintenance fee by the end of the surcharge period, the patent will be expired. To revive the patent you must file a petition. The petition is currently called “Petitions to Accept Unintentionally Delayed Payment of a Maintenance Fee in an Expired Patent.” An important requirement for revival is that the delay in payment was unintentional.

The relatively straight forward case of an unintentional delay is when you forgot to pay the fee. One definition of forget includes “to omit or neglect unintentionally.” 

The USPTO form for this type of petition include the required unintentional statement: “The delay in payment of the maintenance fee for this patent was unintentional.” Currently, the USPTO usually accepts that statement without requiring more information about why the delay was unintentional. The is because the patent owner has a duty to make truthful statements. Untruthful statements might result in the patent being unenforceable.

If the entire delay in making payment is unintentional, a petition to revive the patent can be filed together with the maintenance fee and the petition fee.

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