Patent offices charge a variety of fees to keep patent applications and patents in force over time. These fees are known by a variety of names, the most common of which are “maintenance fees” and “annuities.”
Some patent offices charge maintenance fees for pending patent applications, i.e., for patent applications that have not yet been granted as patents. Some patent offices charge maintenance fees for granted patents. Some patent offices charge maintenance fees for both pending patent applications and granted patents. The U.S. Patent and Trademark Office, for example, does not charge maintenance fees for pending patent applications, but does charge maintenance fees for granted patents.
Each maintenance fee must be paid within a particular window of time. Failure to pay a maintenance fee for a patent or patent application within the applicable window causes the patent/application to become abandoned and therefore unenforceable.
For example, the first maintenance fee for a granted U.S. patent must be paid within 3 years and 3.5 years from the date on which the patent was granted (issued). Failure to pay the maintenance fee within this window of time causes the patent to become abandoned. It is possible in some situations to make a late payment of the maintenance fee, but only upon payment of an additional fee, which can be substantial.
Keeping track of and paying maintenance fees can be challenging and time-consuming for a variety of reasons, such as:
- The rules governing payment of maintenance fees can be complex and vary widely from country to country, and even within a single country for different types of patents.
- The amounts that must be paid vary widely from country to country and can change over time.
- Paying maintenance fees in multiple countries requires calculating currency exchange rates and making international payments quickly and reliably.
- Patent offices do not always notify patent owners of upcoming deadlines for paying maintenance fees, thereby making the patent owners themselves responsible for keeping track of such deadlines.
- The long passage of time between maintenance fee deadlines (e.g., 3-4 years in the U.S.) can increase the likelihood that a maintenance fee deadline will be missed.
- Transfer of ownership of a patent or patent application from one party to another can increase the likelihood that the new owner will fail to make applicable maintenance fee payments on time.
Because of these complexities and the significant negative consequences of failing to pay a maintenance fee in full and on time, we at Robert Plotkin, P.C. strongly recommend that all patent applicants and patent owners rely on their patent attorney to track maintenance fee deadlines and amounts and to make maintenance fee payments for them. Robert Plotkin, P.C. provides maintenance fee payment services for its clients to ensure that all of their patent rights remain intact.
If you have any questions about patent maintenance fee payments, please contact us.