19 - Acceptance of delayed payment of a maintenance fee after expiration of the patent based on unintentional delay

Deciding Office: Office of Petitions

This petition can be filed as an  ePetition.

The criteria for a petition related to acceptance of delayed payment of a maintenance fee after expiration of the patent based on unintentional delay are set forth in 37 CFR 1.378(b) and MPEP 2590.

In general, these are the steps for filing a petition related to acceptance of delayed payment of a maintenance fee after expiration of the patent based on unintentional delay:

  • A petition related to acceptance of delayed payment of a maintenance fee after expiration of the patent based on unintentional delay under 35 U.S.C. 41(c) and 37 CFR 1.378 (b) must be accompanied by:
    • a statement that the delay was unintentional;
    • payment of the appropriate maintenance fee; and
    • payment of the petition fee as set forth in 37 CFR 1.17 (m).
  • If multiple maintenance fees due on a single patent have not been paid, a separate petition fee is required for each delayed maintenance fee payment.
    • A statement that the delay in payment of the maintenance fee was unintentional is also required with respect to each delayed maintenance fee payment.
    • While the patentee can include the statements of unintentional delay in a single petition (if desired), a separate petition fee is required for each delayed maintenance fee payment.

Additional information:

The USPTO requires additional information concerning whether a delay in seeking acceptance of a delayed maintenance fee payment was unintentional where the petition to accept such maintenance fee payment was filed more than two years after the date the patent expired for nonpayment. See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020). 

MPEP §§ 711.03(c)(II)(C)-(F) and 2590(I) contain additional guidance on the information required to establish that the entire delay was unintentional. 
 

Fees:

For the proper petition fee required for a petition related to acceptance of delayed payment of a maintenance fee after expiration of the patent based on unintentional delay, please consult the current USPTO Fee Schedule for codes:

  • Due at 3.5 years, 1551/2551/3551 (Large Entity/Small Entity/Micro Entity);
  • Due at 7.5 years, 1552/2552/3552 (Large Entity/Small Entity/Micro Entity);
  • Due at 11.5 years, 1553/2553/3553(Large Entity/Small Entity/Micro Entity);
  • Petition for the delayed payment of the fee for maintaining a patent in force, 1558/2558/3558 (Large Entity/Small Entity/Micro Entity)

How to file:

For the relevant patent laws and rules applicable to for a petition related to acceptance of delayed payment of a maintenance fee after expiration of the patent based on unintentional delay, please see:

  • 37 CFR 1.17, Patent application and reexamination processing fees;
  • 37 CFR 1.378, Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent;
  • MPEP Chapter 2500, Maintenance fees; and
  • MPEP § 2590, Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

Forms:

The following form is available: Petition Form PTO/SB/66.

For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).

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The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language for any CFR citation.  Because fee schedule changes may not be reflected in the most recent version of the MPEP, please consult the USPTO Fee Schedule to determine current fee amounts.