Inventors Need to Pay Fees to Keep Patents Alive

Patent Maintenance Fees

Copyrights, Patents and Trademarks are Intellectual Property

Patent maintenance fees are mandatory fees that must be paid to the United States Patent Office (“USPTO”) to keep a utility patent alive.  Additionally, to maintain the right to enforce your patent, you must keep your patent alive.  In order to keep it alive, you must pay maintenance fees.

Patent maintenance fees must be paid at specific times after a patent issues in order to keep a utility patent enforceable. See 35 U.S.C. § 41(b). Maintenance fees are not required to keep a design or plant patent alive. Maintenance fees are only required for utility patents and only after a patent has been granted.  Payment of maintenance fees keep the patent alive after it issues.

Maintenance Fees during Covid

Many businesses have suffered as a result of Covid-19.  To help, Congress included patent fee relief as part of the Coronavirus relief act initially passed in March 2020.  As part of the relief, the USPTO allowed patent owners to delay the timing of paying filing fees.  In addition, patent relief included the option to delay certain deadlines. As a result of the relief, approximately $2-3 million in fees was deferred.  The fees appear to have been repaid.

Patent Office Budget

Patent maintenance fees are the largest source of revenue to the Patent Office. During FY 2020, maintenance fees increased $317.7 million, or 23.6%, from FY 2019. In order to maintain a patent, the patent owner must pay maintenance fees at three separate time during the life of the patent.  The fees are required to be paid at 3.5, 7.5, and 11.5 years from the date a patent is issued. Failure to pay these fees will result in the loss of patent protection, and the rights provided by a patent are no longer enforceable. Maintenance fees can be paid during a window which includes a six-month grace period. If a maintenance fee is not paid, the patent owner may need to petition the patent office to reinstate the patent.

The decision on whether to renew a patent is influenced by many factors including, but not limited to, Federal court decisions, IP budgets, the perceived value of the patent, the USPTO’s fee rates, and the economy.  As a result of covid, many inventors and business owners are struggling.  While alive, a patent can provide exclusivity in the marketplace.  However, if a patent dies then the patent owner cannot enforce the patent and maintain their exclusivity.  When considering the cost of renewing a patent, you should consult with a patent attorney.