Patent Maintenance Fees

TABLE 2.1 Patent Maintenance Fee Schedule for Fiscal Year 2009 (effective October 2,2008) 

Due between 3 and 3.5 years Due between 7 and 7.5 years Due between 11 and 11.5 years 

Finally, a patent may be subjected to a reexamination procedure in which the issued patent is reexamined in view of additional prior art not of record in the original prosecution tile for that patent application. The reexamination procedure can proceed by different routes, depending on the circumstances, and it can be a very useful tool for patentees but more likely for those who wish to challenge one or more claims in an issued patent but who do not wish to engage in full scale litigation to do so (see section 2.2.c). 

After a patent issues in the United States, a maintenance fee schedule is established using the issue date of the patent application as the starting time point. The general payment timelines and amounts for U.S. patents for the fiscal year 2009 are shown in Table 2.1. 

These amounts are adjusted each year in concert with the consumer price index as a result, the amount of a maintenance fee that is due for an issued patent needs to be checked before its payment. The first patent maintenance fee must be paid in 

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Once a patent is issued by the USPTO, the interactions between the patentees and the USPTO with respect to that patent will greatly diminish but will not cease. At a minimum, the patent assignees will need to keep current with the patent maintenance fees if they wish the patent to remain enforceable over its entire lifetime (discussed in section 2.2.a). 

Issuance of a United States patent transforms a patent appHcant into a patentee, and new concerns may arise relevant to management. For example, the patent should be reviewed to determine formal and substantive correctness. An audit should be taken regularly to determine whether there is a continuing justification to pay the maintenance fees required to keep the patent in force during its effective period. The patentee or patent assignee may have to address concerns of patent infringement or patent vaHdity. 

Payment of maintenance fees is required at the fourth-, eighth-, and twelfth-year anniversaries of the date of issuance of the patent. The costs of these maintenance fees vary from year to year depending on the regulations of the U.S. PTO. The first maintenance fee tends to be fairly slight, allowing for the further enforcement of the patent with Htde economic burden on the patentee. The second maintenance fee tends to increase the payment from the first maintenance fee by a factor of two. The third maintenance fee tends to be substantial, increasing the payment from the first maintenance fee by a factor of three. 

The patentee should develop and implement a poHcy for auditing its patent portfoHo in the process of paying maintenance fees to the U.S. PTO. This practice should also be used to justify the further payment of aimuities to foreign national patent offices. Maintenance fees and aimuities can constitute a substantial portion of funds expended in the protection of patents over a year s time. Further, without a tangible, real commercial value or advantage stemming from the patent, there may be Htde justification for maintaining the patent over its last five years of life. 

Prepare and file the patent application documents. This document is called a specification. The specification must be clear enough so that anyone skilled in the subject matter of the invention could recreate your invention and use it. In the written portion of the specifications the inventor must slate the claims of the invention. These claims must show that the invention is novel and unobvious. Also, where applicable, illustrations must accompany the specification. There are filing fees for patent applications and if the application is successful there are maintenance fees to keep the patent in force. Literature describing patent applications and how they are to be submitted can be obtained from the Commissioner of Patents and Trademarks, Washington, D. C., 20231. This is also the address to submit properly prepared patent applications. 

In addition to the mandatory maintenance fees, there are certain postgrant procedures that can take place under special circumstances. For example, patent interferences occur where a contest is waged in the USPTO to determine the first inventor of contested subject matter. These contests may occur between two or more applicants... 

CFR 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent. 

In most countries, a patent does not automatically stay in force from the day it is granted until the end of its life. Most countries require payment of fees, referred to as renewal or maintenance fees, to keep the patent in force. In most countries, these fees are paid on an annual basis. Until 1980, the United States was a notable exception. However, in 1980 the United States modified its patent laws to require that fees be paid at three different time periods during the life of the patent. Specifically, renewal fees must be paid at 3.5, 7.5, and 11.5 years from the date the patent is granted. Although renewal fees vary from country to country, it is universal that the fees increase over the life of the patent. For example, the U.S. fees in 2000 are 930, 1870, and 2820 for the three periods, whereas in Germany fees begin at approximately 150 DM and increase to 3500 DM for the 20th year. If the owner... 

As a simple example, the life span of a US patent used to be easy to calculate US patents used to last 17 years, calculated from the date of issue. But US patents filed after 7 June 1995 now last 20 years, calculated from the date of filing (which has been typical outside the United States for many years). Also, a form of tax, known as a maintenance fee, is now imposed on US patents. If the patentee does not pay each fee as it becomes due, the patent lapses. Lastly, patents can be extended via two different mechanisms. Under the rules of Patent Term Restoration, certain patents, mostly pharmaceutical patents, can be extended for up to five years. The theory is that the patentee has suffered an injustice because he or she was essentially denied a portion of the patent s life and not allowed to earn potential profit from the patented invention because of the need to first obtain regulatory (e.g. FDA) approval before bringing the product to market. Under the rules of Patent Term Adjustment, extensions can also be obtained for certain procedural delays during the prosecution of a patent application. The actual term extension for each patent is determined by its specific facts. These two calculations are independent of one another. 

Finally, after the patent has issued, it must be maintained . Maintenance fees must be paid periodically to each country in order to keep the patent in force. Failure to pay results in a lapsed patent. 

The time limitation. A patent has a limited life, which in a great number of countries is further restricted by its being subjected to the payment of maintenance fees or the Uke, so that failure to pay such fees automatically invalidates the patent. 

The end of the patent term under the 17- or 20-year term can be advanced by failure to pay maintenance fees or by a terminal disclaimer. The end of the patent term can be extended in some cases by the patent term extension provisions. See section 2.4.2. 

The cost of obtaining a patent (see Table D.l) varies from one country to another and the judicious choice of countries in which to file depends on the returns to be expected relative to the filing fees and subsequent maintenance fees. 

After filing the provisional patent the inventor should be trying to license, sell or otherwise exploit the invention on a confidential non-disclosure agreement with the view that an interested company would within the 1 year period of grace, file the necessary patents in various countries on behalf of the inventor and, or course, pay all the application fees and maintenance fees. If this does not transpire, then it is up to the inventor to pay the application fees which would be classed as a small entity status and is therefore usually half of the regular filing fee. 

For PRBs using elemental iron, the cost of the reactive media can be estimated based on a density of about 2.83 kg of media per meter and a cost of approximately 440 to 500 per ton. An installation cost between 2500 and 8000 per liter per minute of treatment capacity is a rule-of-thumb for estimating capital cost. Because the elemental iron treatment wall is patented, a site licensing fee, which is typically 15% of the capital costs (materials and constrnction), is often required. Operation and maintenance costs between 1.30 and 5.20 per 1000 liters of treated water may also be used as a rule-of-thumb estimate (D16068J). 

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