2504 Patents Subject to Maintenance Fees [R-10.2019]

Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents and design patents. Furthermore, maintenance fees are required for a reissue patent unless the patent being reissued did not require maintenance fees. See subsection I below for more information regarding the payment of maintenance fees in reissue utility patents and original utility patents for which a reissue application is pending.

Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows:

• (A) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
• (B) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119(a) - (d), the actual United States filing date of the application.
• (C) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
• (D) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, the United States filing date of the original nonreissue application on which the patent reissued is based.
• (E) For an international application that has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.

The term of a utility patent that can be maintained in force by the payment of maintenance fees may be lengthened by any patent term extension under 35 U.S.C. 156 or adjustment under 35 U.S.C. 154, or may be reduced if there is any disclaimed term. Subject to the payment of maintenance fees and any patent term extension, adjustment, or disclaimer, the patent term begins on the date the patent issues and ends 20 years from the date the application was filed, or if the application claims the benefit of an earlier filed U.S. application or applications (excluding provisional applications), the patent term ends 20 years from the date the earliest such application was filed (hereafter, 20 year term). For utility and plant applications filed prior to June 8, 1995, the patent term is the greater of the 20 year term or 17 years from the patent issue date subject to any disclaimer or term extension.

I. REISSUE UTILITY PATENTS AND ORIGINAL UTILITY PATENTS FOR WHICH AN APPLICATION FOR REISSUE IS PENDING

Effective January 16, 2018, each reissue utility patent requires its own maintenance fee payment during the unexpired part of the term of the original patent (unless the original patent was filed before December 12, 1980). This practice requires a maintenance fee to be paid in each reissue patent in force on (i.e., issued before) the maintenance fee due date. This includes all reissue patents that replace the same original patent (“multiple reissued patents”) and have maintenance fees due on or after January 16, 2018. This practice also includes a requirement for maintenance fee payments in original patents that are not surrendered because one or more reissue applications of the same original patent are still pending on the maintenance fee due date. In summary, for maintenance fees due on or after January 16, 2018, a separate payment of the maintenance fee is required for each reissue patent based on a single original patent, and for the original patent if there is a pending reissue application based on the same original patent, to maintain each reissue patent and the original patent in force beyond the 4th, 8th, or 12th anniversary of the grant date of the original patent. The due date for a maintenance fee is the last day the maintenance fee may be paid without a surcharge under 37 CFR 1.362(d). See MPEP § 2506 for more information on the times for submitting maintenance fee payments.

The former practice of requiring only one maintenance fee in the latest issued reissue patent for all reissue patents based on the same original patent and for the original patent was discontinued on January 16, 2018. Accordingly, maintenance fee payments that were due on January 15, 2018 were the last maintenance fees payable under the former practice. However, to ensure that all patentees have a six-month period to pay maintenance fees without a surcharge, the Office is establishing procedures for patentees to request a refund of the surcharge under 37 CFR 1.20(h) for payments submitted January 17, 2018, through July 16, 2018. The surcharge cannot be waived during the transition due to limitations in the automated processing system. The request for refund is limited to the surcharge accompanying the maintenance fee payments that are newly required by this change in practice (e.g., for patents in reissue patent families except for the latest reissue patent). See paragraph D below for more information on the refund of the surcharge under 37 CFR 1.20(h).

A.Maintenance Fee Payments for Multiple Reissued Utility Patents

Effective January 16, 2018, each reissue patent of an original utility patent that was issued from an application filed on or after December 12, 1980 and that is in force on the relevant maintenance fee due date (i.e., the 3½, 7½, or 11½ year date) requires its own maintenance fee payment.

In some instances, more than one reissue patent will be granted to replace a single original patent. “Multiple reissued patents” that replace a single original patent are provided for in 35 U.S.C. 251(b). See MPEP § 1451. In these instances, each of the reissue utility patents requires payment of its own set of maintenance fees in order to prevent expiration of the reissue patent. The maintenance fee payment schedule established for the original patent continues to apply to each reissue patent such that the maintenance fee due dates are based on the date of the original patent grant. Based on the maintenance fee due dates, the time periods for paying maintenance fees in reissue utility patents are set forth in paragraphs (d) and (e) of 37 CFR 1.362. See MPEP § 2506 for more information on the times for submitting maintenance fee payments. To prevent expiration of any reissue patent, including each reissue patent based on a single original patent, any maintenance fee with a due date on or after January 16, 2018 must be paid in each reissue patent in force on the maintenance fee due date.

B.Maintenance Fee Payments for Original Utility Patents Not Surrendered by Reissue

Effective January 16, 2018, the original patent requires a separate maintenance fee payment if at least one reissue application based on the original patent is pending on the maintenance fee due date (i.e., the 3½, 7½, or 11½ year date) even if a maintenance fee payment is made in reissue patent(s) that have issued from the same original patent.

35 U.S.C. 251 permits reissue only for “the unexpired part of the term of the original patent.” An original patent is not surrendered under 35 U.S.C. 252 until a reissue application, based on the original patent, issues as a reissue patent and no other reissue application, based on the same original patent, is still pending. Because it is the granting of the reissue patent – and not the filing of the reissue application - that effectuates surrender of the original patent under 35 U.S.C. 252, maintenance fees remain due in the original patent whenever an application for reissue of the original patent is pending on the maintenance fee due date. Specifically, when one or more reissue patents have issued and at least one application for reissue of the same original patent remains pending, the original patent is not surrendered and maintenance fees remain due in the original patent until the last remaining reissue application issues as a reissue patent or becomes abandoned. In other words, while there is an application for reissue pending in a reissue patent family, maintenance fee payments will be required in both the original patent and the corresponding reissue patent(s).

C.Example

A total of three applications were filed for reissue of the same original utility patent, which issued on August 27, 2010. The reissue applications result in first and second reissue patents granted on June 18, 2013 and June 25, 2013, respectively. The third reissue application based on the original patent is scheduled to issue as the third reissue patent on March 20, 2018 (after the February 27, 2018 due date for the 7½ year maintenance fee). The 3½ year maintenance fee, which was due on February 27, 2014, was paid in the second reissue patent on December 6, 2013, under the former practice that required only one set of maintenance fees in the latest issued reissue patent. The 7½ year maintenance fee due date is Tuesday, February 27, 2018, which is 7½ years after the August 27, 2010 issue date of the original patent.

The following steps are used to determine which patents in the patent family (i.e., the original patent and all reissue patents from the original patent) require payment of the 7½ year maintenance fee:

• 1. Determine whether the new practice applies. For the new practice of more than one maintenance fee being due to apply, the reissue patent family based on an original utility patent will include more than one reissue patent, or at least one reissue patent and at least one pending application for reissue, of the same original utility patent and have maintenance fees due on or after January 16, 2018.

  In this example, the patent family has two reissue patents and a pending reissue application. The 7½ year maintenance fee due date is February 27, 2018, which is after the January 16, 2018 effective date of the new practice set forth in this notice. Therefore, the new practice applies.

• 2. Determine which of the reissue patents in the patent family require separate payment of the maintenance fee.

  In this example, the first and second reissue patents were granted in June 2013 and remain in force on January 16, 2018. Therefore, to avoid expiration of the first and second reissue patents, the 7½ year maintenance fee must be separately paid in both the first and second reissue patents, regardless of whether the maintenance fee(s) are paid before, on, or after January 16, 2018. Note that if any of the required maintenance fee payments are made during the grace period beginning on February 28, 2018 and ending on August 27, 2018, the surcharge under 37 CFR 1.20(h) must be included with each maintenance fee payment made during the grace period.

• 3. Determine whether the original utility patent requires separate payment of the maintenance fee.

  The maintenance fee must be paid if the maintenance fee due date is before the date the original patent is surrendered (i.e., the date the last remaining application for reissue of the original patent issues as a reissue patent or becomes abandoned). Any time an application for reissue of the original patent is still pending on the maintenance fee due date, the maintenance fee must be paid in the original patent.

  In this example, the third reissue application is still pending on the February 27, 2018 maintenance fee due date and is not scheduled to issue as a reissue patent until March 20, 2018. Therefore, the 7½ year maintenance fee must be paid in the original patent to avoid expiration of the third reissue patent. To avoid any uncertainty in the record about payment of the maintenance fee, payment should be made prior to March 20, 2018 because when the third reissue application issues as a reissue patent, the original patent is surrendered and ceases to exist. If the maintenance fee is paid on or after March 20, 2018, payment must still be made in the original patent because the maintenance fee was due before surrender of the original patent. In addition, if the 7½ year maintenance fee is paid during the grace period beginning on February 28, 2018 and ending on August 27, 2018, the maintenance fee payment must include the surcharge under 37 CFR 1.20(h).

In the example above, note that the 7½ year maintenance fee would be the first maintenance fee ever paid in both the original patent and the first reissue patent because the 3½ year maintenance fee was paid (four years ago) in only the second reissue patent under the former practice that required maintenance fee payment in only the latest issued reissue patent. Also, note that if the original utility patent, which issued on August 27, 2010 in the example, was instead issued on June 15, 2010, the 7½ year maintenance fee would be due prior to the January 16, 2018 effective date. In this situation, the 7½ year maintenance fee would only be due in the latest issued reissue patent under the former practice, even if the 7½ year maintenance fee and surcharge under 37 CFR 1.20(h) are paid on or after the January 16, 2018 effective date during the grace period.

D.Request for Refund of the Surcharge under 37 CFR 1.20(h) for a Limited Time

To ensure that all patentees have a six-month period to pay maintenance fees without a surcharge, the Office is establishing procedures for patentees to request a refund of the surcharge under 37 CFR 1.20(h) for payments submitted January 16, 2018 through July 16, 2018. The request for refund is limited to the surcharge accompanying the maintenance fee payments that are newly required by this change in practice (e.g., for patents in reissue patent families except for the latest reissue patent). In other words, the new practice did not alter the requirement to pay the maintenance fees within the 37 CFR 1.362(d) or (e) time periods to avoid the expiration of a single reissue patent, the latest reissue patent in a reissue patent family, or the original patent when no reissue patent has issued. For these patents, any request for refund should not be made and will not be favorably considered if made.

To request a refund for the surcharge under 37 CFR 1.20(h), patentee must submit a letter that states the patent number(s) for which the maintenance fee(s) and surcharge(s) were made, the maintenance fee due date(s), the original payment date(s), the fee amount(s), the fee codes(s), and a brief explanation of why a refund is appropriate. In the brief explanation, patentees must explain why the maintenance fee payment is newly required by the change in practice and should make reference to the Official Gazette notice Original Utility Patents Not Surrendered by Reissue and All Reissue Patents in the Reissue Patent Family Require Separate Maintenance Fee Payments, 1446 OG 300 (January 30, 2018). For example, the brief explanation should identify the original patent, the reissue patents and any pending application(s) for reissue in the reissue patent family, any previously paid maintenance fees, and for which patents the maintenance fees were paid, if applicable. A request for refund must be made on or before January 16, 2019. The request for refund may be submitted via EFS-Web using document code PET.OP or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

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