Keeping Your Patent Alive: Maintenance Fees

Oct 12, 2022

Finally, you did it! Your patent was allowed and you paid your issue fee. Now what? This means that you can move forward with actually developing your product while knowing you have legal protection for your intellectual property.

While this can be an incredibly exciting step, it is important to remember that the patent process does not end there. In order to ensure your patent remains valid for the full term of 20 years, a series of maintenance fees must be paid. Let’s explain this further.

Defining Maintenance Fees

Patent maintenance fees are mandatory fees that must be paid to the United States Patent and Trademark Office (USPTO) at certain periods during the patent lifespan in order to keep the patent in force. They are not due during the initial issuance of the patent, but rather are required once the patent has already been issued.

Maintenance fees are only required to keep utility nonprovisional patents in place. They are not required for provisional, design, or plant patents. Generally, you can expect to pay maintenance fees at the following times:

  • 3.5 years after grant
  • 7.5 years after grant
  • 11.5 years after grant

You may pay maintenance fees up to six months before they are due, and you will then also have a six-month grace period after each fee due date to submit payment.

Factors Impacting the Cost of Maintenance Fees

There are certain factors that will impact the cost of maintenance fees, such as the size of the entity and the time that the fee is being paid. According to the USPTO website, at the time of writing this blog, the renewal fee schedules for patents are as follows:

The 4-Year Mark

  • Large entity: $1,600
  • Small entity: $800
  • Micro entity: $400

The 8-Year Mark

  • Large entity: $3,600
  • Small entity: $1,800
  • Micro entity: $900

The 12-Year Mark

  • Large entity: $7,400
  • Small entity: $3,700
  • Micro entity: $1,850

For reference, a large entity typically has 500 or more employees while a small entity has less than 500 employees. A micro entity is one in which the patent applicant has an income of no more than three times the median household income, and the applicant has not been named on more than four previous applications.

Penalties for Failing to Pay Maintenance Fees

Failing to pay maintenance fees on time will result in penalty fees, but these penalty fees are only applicable in the six-month grace period we mentioned above. If your maintenance fee is unpaid past this six-month point, you give up the rights to the patent and must submit a petition to the USPTO for reinstatement. The good news is that, even if your parent is forfeited, another person cannot come in and get a patent for the same exact invention. It is still considered your art, and failing to pay maintenance fees does not erase the fact that your prior art exists.

In short, you can consider maintenance fees a sort of renewal fee. While it may be an ongoing financial investment, most patent holders find that these fees are well worth it because it means no one else can infringe on their rights. There may be certain situations where it may be questionable as to whether the ongoing fees are worth it. A patent attorney can review your specific case and determine whether it is logical to keep paying maintenance fees for the upkeep of the patent. For instance, the following may be taken into consideration:

  • Whether the patent idea is still aligned with the product and services you have planned
  • Whether holding the patent is necessary for the protection of ongoing product development
  • Whether the patent is important to protect against potential outside product development

Helping You Maximize the Lifespan of Your Patent

If you need help with your patent maintenance fees, please don’t hesitate to contact us at Dana Legal Services! Our trusted intellectual property attorneys have over 25 years of legal experience and pride ourselves in providing each client with the quality, tailored services that they deserve. We provide free, no-obligation consultations, so you have nothing to lose by making the first step and contacting our team.

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