Maintenance fees must be paid on all utility applications filed after December 12, 1980. Maintenance fees are not required on design or plant patents. The fees are due 3, 7 and 11 years after the patent is issued. The date used for calculating the due dates of the fees varies depending on specific circumstances, however, it is usually the U.S. filing date for the application.

In regards to paying the fees, there is a 6 month time period within which they should be paid. If the fees are not paid after that window of time there is a 6 month grace period where the fee plus a surcharge may be paid to keep the patent from expiring. If nothing is paid by this time, the patent will expire and will be considered abandoned.

Although this chapter is smaller, it is tested quite heavily. The patent bar exam always has several questions pertaining to maintenance fees on it. Pay extra attention to when maintenance fees are due.

2501 Introduction
Standard patent terms are generally fairly long; 20 years in the case of utility patents. But, in order to keep a patent from expiring, maintenance fees must be paid over the duration of the term.

no fee is required for maintaining a design or plant patent, but all others must pay to keep the patent from expiring

Normal payment schedule:
the fees are due at three timeperiods throughout the life of a patent:
3 years and 6 months after grant, $830.00
7 years and 6 months after grant, $1,900.00
11 years and 6 months after grant, $2,910.00

Grace periods:
there is a grace period of 6 months which begins after the three timeperiods mentioned
above, the grace periods end at:
4 years after grant
8 years after grant
12 years after grant

when paying during the 6 month grace period, there is a surcharge required in addition to the payment of the maintenance fee

unless the payment of the applicable maintenance fee is received at the PTO on or before the date the fee is due or within a grace period of six months thereafter, the patent will expire

2504 Patents subject to maintenance fees
Maintenance fees are required on all patents based on applications filed on or after December 12, 1980, with the exception ofplant and design patents.

§ 1.362 Time for payment of maintenance fees.
(a) Maintenance fees as set forth in §§ 1.20(e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
(b) Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.

fees are not required for reissue patents only when the patent being reissued did not require maintenance fees

2506 Times for submitting maintenance fee payments
Application filing dates for purposes of determining maintenance fees payments.

§ 1.362 Time for payment of maintenance fees.
(c) The application filing dates for purposes of payment of maintenance fees are as follows:
(1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
(2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
(3) For a continuing (continuation, division, continuationinpart) 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.
(4) 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.
(5) For an international application which 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.
(d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and (3)
11 years through 11 years and 6 months after grant for the third maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without surcharge set forth in paragraph (d) of this section, or the last day for paying a maintenance fee with surcharge set forth in paragraph (e) of this section, falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee and any necessary surcharge may be paid under paragraph (d) or paragraph (e) respectively on the next succeeding day which is not a Saturday, Sunday, or Federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is paid within the time periods set forth in paragraphs (d), (e) or (f) of this section, the patent will expire as of the end of the grace period set forth in paragraph (e) of this section. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant.
(h) The periods specified in §§1.362 (d) and (e) with respect to a reissue application, including a continuing reissue application thereof, are counted from the date of grant of the original nonreissue application on which the reissued patent is based.

maintenance fees may not be paid in advance

Which application filing date to use:

Time periods when maintenance fees may be paid without a surcharge:
due dates for paying without a surcharge are as follows:
3 to 3.5 years after date of issue for first maintenance fee payment
7 to 7.5 years after the date of issue for the second maintenance fee payment
11 to 11.5 years after the date of issue for the third and final maintenance fee payment

maintenance fees paid on the last day of a window period can be paid without a surcharge

the last day of a window period is the same day of the month the patent was granted

the schedule for the original utility application is the schedule maintenance fees are based on

maintenance fees for reissue patents are based upon the same schedule as original patents

Time periods when fees can be paid with a surcharge:
these time periods are referred to as "grace periods"
the 6 month time periods (grace periods) immediately follow each normal due date and are:
3.5 through the date of the 4th anniversary
7.5 through the date of the 8th anniversary
11.5 through the date of the 12th anniversary
a payment plus the surcharge may be paid on the same date (the anniversary date) the patent was granted in the 4th, 8th or 12th year to prevent the patent from expiring
a patent that expires for failure of payment will expire on the anniversary date the patent was granted in the 4th, 8th or 12th year after the grant

2515 Information required for submission of maintenance fee payment
The following rule establishes the guidelines for the submission of maintenance fees.

§ 1.366 Submission of maintenance fees.
(a)The patentee may pay maintenance fees and any necessary surcharges, or any person or organization may pay maintenance fees and any necessary surcharges on behalf of a patentee. Authorization by the patentee need not be filed in the Patent and Trademark Office to pay maintenance fees and any necessary surcharges on behalf of the patentee.
(b)A maintenance fee and any necessary surcharge submitted for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. A maintenance fee or surcharge may be paid in the manner set forth in §1.23 or by an authorization to charge a deposit account established pursuant to § 1.25Payment of a maintenance fee and any necessary surcharge or the authorization to charge a deposit account must be submitted within the periods set forth in §1.362(d),(e), or (f).Any payment or authorization of maintenance fees and surcharges filed at any other time will not be accepted and will not serve as a payment of the maintenance fee except insofar as a delayed payment of the maintenance fee is accepted by the Director in an expired patent pursuant to a petition filed under §1.378.Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth § 1.23,,or in the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The procedures set forth in § 1.8 or § 1..10 may be utilized in paying maintenance fees and any necessary surcharges. (c)In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the application number of the United States application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number (i.e., does not identify the application number of the United States application for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment.
(d)Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 3 1/2,7 1/2,or 11 1/2year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application number as required by paragraph (c)of this section and should also include the original patent number.
(e)Maintenance fee payments and surcharge payments relating thereto must be submitted separate from any other payments for fees or charges, whether submitted in the manner set forth in § 1.23 or by an authorization to charge a deposit account. If maintenance fee and surcharge payments for more than one patent are submitted together, they should be submitted on as few sheets as possible with the patent numbers listed in increasing patent number order. If the payment submitted is insufficient to cover the maintenance fees and surcharges for all the listed patents, the payment will be applied in the order the patents are listed, beginning at the top of the listing.
(f)Notification of any change in status resulting in loss of entitlement to small entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small entity is no longer appropriate. See § 1..27(g).
(g)Maintenance fees and surcharges relating thereto will not be refunded except in accordance with §§1.26 and 1.28(a).

Who may pay the fees?
patentees may pay the fees themselves or an individual or an organization may pay the fees for them
any person or even a company may pay the maintenance fee for the patentee
authorization by the patentee is not required they just want the money

Identification required with maintenance fee payment:
when paying a maintenance fee, the following information regarding the patent should be submitted:
the fee year
the amount of the maintenance fee and any surcharge being submitted
any assigned customer number
whether small entity status is being changed or claimed with the payment the telephone number of person submitting the fee
the patent number
the application number

a patent may expire if the maintenance fee is not received by the due date because it was not properly identified
an applicant may file a petition arguing that the maintenance fee should be accepted as timely

any payments must include the patent number and the application number of the actual application (whether it be the original or a reissue patent)

if the payment of a maintenance fee includes only the patent number (i.e., it does not identify the application number of the U.S. application for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or they may return the payment

the PTO has the option to return or apply the money only under these specific circumstances

2520 Maintenance fee amounts
small entities receive a 50% reduction in price

2522 Methods of payment
a maintenance fee may be paid:
with cash
with Treasury notes
with national bank notes
with post office money orders
with certified checks
over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods

the payment will not be accepted if the:
payment is less than the required amount
payment is made in a manner other than those listed above
deposit account authorized to make the payment does not have enough money to cover the cost

maintenance fee payments and surcharges must be submitted separately from any other payment for fees or charges
however, maintenance fees for a number of patents may be submitted together in one submission and one payment

2530 Informalities
Informalities as defined here indicate that the requirements for paying the maintenance fees were not met.

informalities may occur when the:
payment was received without the patent and application number
payment was received with an incorrect patent or application number
payment for a reissue patent was received and the reissue patent number and/or the reissue application serial number was not provided
payment was received, however, additional funds were required due to a surcharge or fee increase
payment was received in an amount appropriate for a small entity, but the records do not indicate a statement claiming small entity was received
payment was received after the patent had already expired

an appropriate petition to an informality may be filed under 37 C.F.R. 1.377

2540 Fee address for maintenance fee purposes
All notices will be directed to the correspondence address unless a `fee address" has been designated.

§ 1.363 Fee address for maintenance fee purposes.
(a) All notices, receipts, refunds, and other communications relating to payment or refund of maintenance fees will be directed to the correspondence address used during prosecution of the application as indicated in § 1.33(a) unless:
(1) A fee address for purposes of payment of maintenance fees is set forth when submitting the issue fee, or
(2) A change in the correspondence address for all purposes is filed after payment of the issue fee, or
(3) A fee address or a change in the "fee address" is filed for purposes of receiving notices, receipts and other correspondence relating to the payment of maintenance fees after the payment of the issue fee, in which instance, the latest such address will be used.
(b) An assignment of a patent application or patent does not result in a change of the
"correspondence address" or "fee address" for maintenance fee purposes.

maintenance fee reminders will be sent to the correspondence address used during the application prosecution unless a fee address is listed
any assignments made will not receive any correspondence unless a change of correspondence address for the patent file has been sent in

2542 Change of correspondence address
changes in the correspondence address may be made by the inventor(s) named in the patent, an attorney or agent of record or by the assignee
a change of correspondence address made prior to the filing of an oath or declaration is made as provided in 37 C.F.R. 1.33(a)(1), whereas a change of correspondence address made after the filing of an executed oath or declaration is made as provided in 37 C.F.R. 1.33(a)(2)

2550 Small entity status
patentees should check for the loss of small entity status prior to the payment of each maintenance fee
if payment is submitted that conflicts with the Office record of patentee's entity status, a Notice of Nonacceptance of the maintenance fee will be sent to the fee submitter (or a Notice of Overpayment if the fee was sent in access)

2575 Notices
the Office has no duty to notify patentees when their maintenance fees are due: however, they try to send out a reminder notice during the grace period notices provided by the Office should merely be thought of as a courteous reminder attempt, the Office is not required to send anything at all

it is always the patentee's responsibility to pay the maintenance fee on time, the failure to receive the reminder notice will never shift the burden to the Office

a notice will appear in the Official Gazette indicating which patents are up for maintenance fees

2580 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent
This section relates to the patentees choices if the PTO refuses their maintenance fee and the patent has not yet expired.

§ 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
(a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Commissioner to accept and record the maintenance fee.
(b) Any petition under this section must be filed within 2 months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in § 1.17(h). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.
(c) Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
any patentee who is dissatisfied with the refusal of the PTO to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Commissioner to accept and record the maintenance fee

any petition under this section must be filed within 2 months of the action complained of

2590 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent
This section describes what the patentee may do if the PTO refuses their maintenance fee and the patent has already expired.

§ 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a) The Commissioner may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Commissioner to have been unavoidable (paragraph (b) of this section) or unintentional (paragraph (c) of this section) and if the surcharge required by § 1.20(i) is paid as a condition of accepting payment of the maintenance fee. If the Commissioner accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
(b) Any petition to accept an unavoidably delayed payment of a maintenance fee filed under paragraph (a) of this section must include:
(1) The required maintenance fee set forth in § 1.20 (e) through (g);
(2) The surcharge set forth in § 1.20(i)(1); and
(3) A showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and that the petition was filed promptly after the patentee was notified of, or otherwise became aware of, the expiration of the patent. The showing must enumerate the steps taken to ensure timely payment of the maintenance fee, the date and the manner in which patentee became aware of the expiration of the patent, and the steps taken to file the petition promptly.
(c) Any petition to accept an unintentionally delayed payment of a maintenance fee filed under paragraph (a) of this section must be filed within twentyfour months after the sixmonth grace period provided in § 1.362(e) and must include:
(1) The required maintenance fee set forth in § 1.20 (e) through (g);
(2) The surcharge set forth in § 1.20(i)(2); and
(3) A statement that the delay in payment of the maintenance fee was unintentional.
(d) Any petition under this section must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
(e) Reconsideration of a decision refusing to accept a maintenance fee upon petition filed pursuant to paragraph (a) of this section may be obtained by filing a petition for reconsideration within two months of, or such other time as set in, the decision refusing to accept the delayed payment of the maintenance fee. Any such petition for reconsideration must be accompanied by the petition fee set forth in § 1.17(h). After decision on the petition for reconsideration, no further reconsideration or review of the matter will be undertaken by the Commissioner. If the delayed payment of the maintenance fee is not accepted, the maintenance fee and the surcharge set forth in § 1.20(i) will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed. Any petition fee under this section will not be refunded unless the refusal to accept and record the maintenance feeds determined to result from an error by the Patent and Trademark Office.

the Commissioner may accept the payment of any maintenance fee due on a patent after the expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Commissioner to have been unavoidable or unintentional and if the surcharge required is paid as a condition of accepting payment of the maintenance fee

there will be a lapse of time between a patent's expiration (due to nonpayment of the maintenance fee) and when the petition to reinstate the patent is accepted

during this lapse period, someone else who uses the patented invention in such a way that would otherwise be infringement is immune from prosecution they cannot be sued for anything they did during that timeperiod

patents whose maintenance fee is intentionally not paid cannot be revived, but unavoidably or unintentionally abandoned patents can be revived through a petition

Requirements to petition unavoidable delay:
petitions to accept an unavoidably delayed payment of maintenance fees must include: the required maintenance fee
the required surcharge
a showing that the delay was unavoidable by listing the:
steps taken to ensure the timely payment of the maintenance fee
date and the manner in which the patentee became aware of the expiration of the patent
steps taken to file the petition promptly

the patentee's lack of knowledge of the need to pay the maintenance fee and/or the failure to receive the maintenance fee reminder will never count as unavoidable delay

Requirements to petition unintentional delay:
petitions to accept an unintentionally delayed payment of a maintenance fee must:
be filed within 24 months after the 6 month grace period
include the maintenance fee
include the surcharge
include a statement that the delay in payment was unintentional (based on MPEP 711.03(c))

to claim unintentional delay, the petition must be filed before the expiration of 24 months after the sixmonth grace period
if the petition is accepted, the applicant will have to pay both the surcharge and the maintenance fee