13.2 Maintenance Fees & Expiration

13.2 Maintenance Fees & Expiration

Exam Tip: Remember the "3.5 / 7.5 / 11.5 year" maintenance fee rule for utility patents and the fact that design and plant patents never pay maintenance fees. Pay close attention to how expiration date is calculated (anniversary of grant date) and the unintentional delay standard for reinstatement.

1. Scope and Statutory Authority for Maintenance Fees (35 U.S.C. § 41(b))

Under 35 U.S.C. § 41(b), maintenance fees are required to keep utility patents issued from applications filed on or after December 12, 1980 in force. Maintenance fees serve as post-issuance administrative fees to ensure that patentees maintain an active commercial or technical interest in their exclusive rights.

Applicable Patent Types and Exemptions

• Utility Patents: Required to pay 3 separate maintenance fees over their lifespan.
• Reissue Patents: Required to pay maintenance fees ONLY if the underlying original patent was a utility patent. Fee schedules for reissue utility patents are calculated based on the grant date of the original patent, not the reissue grant date.
• Design Patents (35 U.S.C. § 173): EXEMPT. Design patents require no maintenance fees.
• Plant Patents (35 U.S.C. § 161): EXEMPT. Plant patents require no maintenance fees.

Entity Discounts for Maintenance Fees

Maintenance fees are subject to statutory entity discounts established under the Leahy-Smith America Invents Act (AIA) and the Fee Structure regulations:

• Large Entity: Standard full fee (100%).
• Small Entity (37 C.F.R. § 1.27): 60% discount (pays 40% of standard fee).
• Micro Entity (37 C.F.R. § 1.29): 80% discount (pays 20% of standard fee).

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2. Maintenance Fee Payment Schedule & Windows

Maintenance fees are due at three specific milestone intervals measured from the date of patent grant (issue date):

Payment Window Mechanics

• Normal Window: A 6-month payment window opens 6 months prior to the statutory due date (e.g., at 3.0 years, 7.0 years, and 11.0 years). Payments submitted during this normal window require only the base maintenance fee.
• Grace Period Window (35 U.S.C. § 41(b)): If the maintenance fee is not paid during the normal window, it may be paid during the 6-month grace period that immediately follows the statutory due date (i.e. from 3.5 to 4.0 years, 7.5 to 8.0 years, or 11.5 to 12.0 years). Payment during the grace period requires payment of the base maintenance fee plus a statutory surcharge under 37 C.F.R. § 1.20(h).

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3. Consequence of Non-Payment: Patent Expiration

If the maintenance fee and required surcharge are not paid prior to the conclusion of the 6-month grace period, the patent expires at the end of the grace period.

Exact Date of Expiration

A critical Patent Bar distinction: The patent does not expire on the date the grace period ends; legally, the patent expires on the anniversary date of the grant at the end of the 4th, 8th, or 12th year following grant!

• If a patent issues on October 15, 2020, the 1st maintenance fee is due April 15, 2024 (3.5 years). The 6-month grace period ends October 15, 2024 (4.0 years).
• If unpaid, the patent expires at midnight on October 15, 2024 (the 4th anniversary of issue).

Upon expiration, the patentee's exclusive rights terminate, and the disclosed invention enters the public domain unless reinstated.

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4. Reinstatement via Petition for Delayed Payment (37 C.F.R. § 1.378)

If a utility patent expires for failure to pay a maintenance fee, the patentee may petition the USPTO to accept late payment and reinstate the patent under 37 C.F.R. § 1.378.

The "Unintentional Delay" Standard

Under the Patent Law Treaties Implementation Act (PLITA), the sole legal standard for accepting delayed maintenance fee payments is that the entire delay in submitting the maintenance fee was unintentional. (The former, stricter "unavoidable delay" standard was eliminated).

Petition Requirements under 37 C.F.R. § 1.378(b)

To reinstate an expired patent, the petitioner must submit:

1. The full required maintenance fee (at the current entity rate).
2. The petition fee specified in 37 C.F.R. § 1.20(e).
3. A signed statement that the delay in payment of the maintenance fee was unintentional from the due date until the filing of the petition.

Note on Extended Delays: If a petition under § 1.378 is filed more than 2 years after the expiration of the grace period, the USPTO may require additional evidence and explanations demonstrating that the entire delay was unintentional.

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5. Intervening Rights of Third Parties (35 U.S.C. § 41(c))

When an expired patent is reinstated upon acceptance of a delayed maintenance fee, third parties who relied on the public notice of patent expiration are protected by statutory Intervening Rights under 35 U.S.C. § 41(c).

Absolute Intervening Rights

A person who made, purchased, offered to sell, used, or imported a specific thing covered by the patent after the six-month grace period and before acceptance of the late maintenance fee may receive absolute intervening rights as to that existing thing. Substantial preparations do not create absolute rights; they are considered under the court’s separate equitable-intervening-rights discretion.

Equitable Intervening Rights

A court may also grant equitable intervening rights allowing a third party to continue manufacturing, using, importing, or selling additional items (beyond specific physical items already built) to the extent and under terms the court deems equitable for the protection of investments made or business operations commenced between expiration and reinstatement.