MPEP Chapter 2500 - Maintenance Fees

Chapter 2500 Maintenance Fees

Introduction2501 [Reserved]2502

-2503 Patents Subject to Maintenance Fees2504 [Reserved]2505 Times for Submitting Maintenance FeePayments

2506

[Reserved]2507-2509

Submission of Maintenance FeePayments and Documents

2510

[Reserved]2511-2514

Information Required for Submissionof Maintenance Fee Payment

2515

[Reserved]2516-2519

Maintenance Fee Amounts2520 [Reserved]2521 Methods of Payment2522 [Reserved]2523

-2529 Special Acceptance of Maintenance FeePayments Containing Informalities

2530

Payment Late or Insufficient2531 Duplicate Payments2532 [Reserved]2533

-2539 Fee Address for Maintenance FeePurposes

2540

[Reserved]2541 Change of Correspondence Address2542 [Reserved]2543

-2549 Entity Status Discounts2550 [Reserved]2551

-2559 Revocation of Power of Attorney andWithdrawal of Attorney

2560

[Reserved]2561-2569

Maintenance Fee Payment StatusRequests

2570

[Reserved]2571-2574

Notices2575 [Reserved]2576

-2579 Review of Decision Refusing to Acceptand Record Payment of a MaintenanceFee Filed Prior to Expiration of Patent

2580

[Reserved]2581-2589

Acceptance of Delayed Payment ofMaintenance Fee in Expired Patent toReinstate Patent

2590

Intervening Rights in ReinstatedPatents

2591

[Reserved]2592-2594

Forms2595

2501 Introduction [R-07.2015]

35 U.S.C. 41 Patent fees; patent and trademark searchsystems.

*****

(b) MAINTENANCE FEES

(1) IN GENERAL. — The Director shall charge thefollowing fees for maintaining in force all patents based onapplications filed on or after December 12, 1980:

(A) Three years and 6 months after grant, $980.

(B) Seven years and 6 months after grant, $2,480.

(C) Eleven years and 6 months after grant, $4,110.

(2) GRACE PERIOD; SURCHARGE. — Unlesspayment of the applicable maintenance fee under paragraph (1)is received in the Office on or before the date the fee is due orwithin a grace period of 6 months thereafter, the patent shallexpire as of the end of such grace period. The Director mayrequire the payment of a surcharge as a condition of acceptingwithin such 6-month grace period the payment of an applicablemaintenance fee.

(3) NO MAINTENANCE FEE FOR DESIGN ORPLANT PATENT. — No fee may be established for maintaininga design or plant patent in force.

(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.—

(1) ACCEPTANCE. — The Director may accept thepayment of any maintenance fee required by subsection (b) afterthe 6-month grace period if the delay is shown to the satisfactionof the Director to have been unintentional. The Director mayrequire the payment of the fee specified in subsection (a)(7) asa condition of accepting payment of any maintenance fee afterthe 6-month grace period. If the Director accepts payment of amaintenance fee after the 6-month grace period, the patent shallbe considered as not having expired at the end of the graceperiod.

(2) EFFECT ON RIGHTS OF OTHERS.— A patent,the term of which has been maintained as a result of theacceptance of a payment of a maintenance fee under thissubsection, shall not abridge or affect the right of any person orthat person’s successors in business who made, purchased,offered to sell, or used anything protected by the patent withinthe United States, or imported anything protected by the patentinto the United States after the 6-month grace period but priorto the acceptance of a maintenance fee under this subsection,

Rev. 08.2017, January 20182500-1

to continue the use of, to offer for sale, or to sell to others to beused, offered for sale, or sold, the specific thing so made,purchased, offered for sale, used, or imported. The court beforewhich such matter is in question may provide for the continuedmanufacture, use, offer for sale, or sale of the thing made,purchased, offered for sale, or used within the United States, orimported into the United States, as specified, or for themanufacture, use, offer for sale, or sale in the United States ofwhich substantial preparation was made after the 6-month graceperiod but before the acceptance of a maintenance fee underthis subsection, and the court may also provide for the continuedpractice of any process that is practiced, or for the practice ofwhich substantial preparation was made, after the 6-month graceperiod but before the acceptance of a maintenance fee underthis subsection, to the extent and under such terms as the courtdeems equitable for the protection of investments made orbusiness commenced after the 6-month grace period but beforethe acceptance of a maintenance fee under this subsection.

*****

I. MAINTENANCE FEE BRANCH

The Maintenance Fee Branch of the ReceiptsAccounting Division of the Office of Financeprovides specialized advice and guidance to thepublic on maintenance fee matters.

The Maintenance Fee Branch determines the properstatus of issued patents which are subject to paymentof maintenance fees, receives and processes feetransmittals, updates entity status, responds to publicinquiries on post-issuance status and maintenancefees, and determines if maintenance fees are timelyand properly computed. This Branch also generatesthe data necessary to produce Official Gazettenotices of maintenance fees due and of expirationof patents due to failure to pay maintenance fees.

II. OFFICE OF PATENT APPLICATIONPROCESSING

The Office of Patent Application Processing (OPAP)updates patent post issuance automated files withthe following information:

(A) Changes of Correspondence Address

(B) Powers of Attorney and Revocations Thereof

(C) Changes to Entity Status

The official mailing address for submitting requeststo update all post-issuance patent information is:

Director of the United States Patent and TrademarkOfficeMail Stop Post IssueP.O. Box 1450Alexandria, Virginia 22313-1450

2502-2503 [Reserved]

2504 Patents Subject to Maintenance Fees[R-08.2017]

37 CFR 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 filedon or after December 12, 1980, except as noted in paragraph(b) of this section, to maintain a patent in force beyond 4, 8 and12 years after the date of grant.

(b) Maintenance fees are not required for any plant patentsor for any design patents. Maintenance fees are not required fora reissue patent if the patent being reissued did not requiremaintenance fees.

(c) The application filing dates for purposes of payment ofmaintenance fees are as follows:

(1) For an application not claiming benefit of an earlierapplication, the actual United States filing date of the application.

(2) For an application claiming benefit of an earlierforeign application under 35 U.S.C. 119, the United States filingdate of the application.

(3) For a continuing (continuation, division,continuation-in-part) application claiming the benefit of a priorpatent application under 35 U.S.C. 120, the actual United Statesfiling date of the continuing application.

(4) For a reissue application, including a continuingreissue application claiming the benefit of a reissue applicationunder 35 U.S.C. 120, [the] United States filing date of theoriginal non-reissue application on which the patent reissued isbased.

(5) For an international application which has enteredthe United States as a Designated Office under 35 U.S.C. 371,the international filing date granted under Article 11(1) of thePatent Cooperation Treaty which is considered to be the UnitedStates filing date under 35 U.S.C. 363.

(d) Maintenance fees may be paid in patents withoutsurcharge during the periods extending respectively from:

(1) 3 years through 3 years and 6 months after grantfor the first maintenance fee,

(2) 7 years through 7 years and 6 months after grantfor the second maintenance fee, and

(3) 11 years through 11 years and 6 months after grantfor the third maintenance fee.

(e) Maintenance fees may be paid with the surcharge setforth in § 1.20(h) during the respective grace periods after:

2500-2Rev. 08.2017, January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 2502-2503

(1) 3 years and 6 months and through the day of the4th anniversary of the grant for the first maintenance fee.

(2) 7 years and 6 months and through the day of the8th anniversary of the grant for the second maintenance fee, and

(3) 11 years and 6 months and through the day of the12th anniversary of the grant for the third maintenance fee.

(f) If the last day for paying a maintenance fee withoutsurcharge set forth in paragraph (d) of this section, or the lastday for paying a maintenance fee with surcharge set forth inparagraph (e) of this section, falls on a Saturday, Sunday, or afederal holiday within the District of Columbia, the maintenancefee and any necessary surcharge may be paid under paragraph(d) or paragraph (e) respectively on the next succeeding daywhich is not a Saturday, Sunday, or Federal holiday.

(g) Unless the maintenance fee and any applicablesurcharge is paid within the time periods set forth in paragraphs(d), (e) or (f) of this section, the patent will expire as of the endof the grace period set forth in paragraph (e) of this section. Apatent which expires for the failure to pay the maintenance feewill expire at the end of the same date (anniversary date) thepatent was granted in the 4th, 8th, or 12th year after grant.

(h) The periods specified in §§ 1.362(d) and (e) with respectto a reissue application, including a continuing reissueapplication thereof, are counted from the date of grant of theoriginal non-reissue application on which the reissued patent isbased.

Maintenance fees are required to be paid on allpatents based on applications filed on or afterDecember 12, 1980, except for plant patents anddesign patents. Furthermore, maintenance fees arenot required for a reissue patent if the patent beingreissued did not require maintenance fees. Wherethere are multiple continuation/divisional reissuesof an original utility patent, the maintenance fee mustbe directed to the latest reissue patent. Only onemaintenance fee is required for all the multiplereissue patents that replaced the single originalpatent. See MPEP § 1415.01.

Application filing dates for purposes of determiningwhether a patent is subject to payment ofmaintenance fees are as follows:

(A) For an application not claiming benefit ofan earlier application, the actual United States filingdate of the application.

(B) For an application claiming benefit of anearlier foreign application under 35 U.S.C.119(a)-(d), the actual United States filing date of theapplication.

(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 continuingapplication.

(D) For a reissue application, including acontinuing reissue application claiming the benefitof a reissue application under 35 U.S.C. 120, theUnited States filing date of the original nonreissueapplication on which the patent reissued is based.

(E) For an international application that hasentered the United States as a Designated Officeunder 35 U.S.C. 371, the international filing dategranted under Article 11(1) of the Patent CooperationTreaty which is considered to be the United Statesfiling date under 35 U.S.C. 363.

The term of a utility patent that can be maintainedin force by the payment of maintenance fees may belengthened by any patent term extension under 35U.S.C. 156 or adjustment under 35 U.S.C. 154, ormay be reduced if there is any disclaimed term.Subject to the payment of maintenance fees and anypatent term extension, adjustment, or disclaimer, thepatent term begins on the date the patent issues andends 20 years from the date the application was filed,or if the application claims the benefit of an earlierfiled U.S. application or applications (excludingprovisional applications), the patent term ends 20years from the date the earliest such application wasfiled (hereafter, 20 year term). For utility and plantapplications filed prior to June 8, 1995, the patentterm is the greater of the 20 year term or 17 yearsfrom the patent issue date subject to any disclaimeror term extension.

2505 [Reserved]

2506 Times for Submitting Maintenance FeePayments [R-08.2012]

Maintenance fees cannot be paid in advance since35 U.S.C. 41(f) permits maintenance fees to beadjusted every year on October 1 to reflect anyfluctuations during the previous 12 months in theConsumer Price Index as determined by theSecretary of Labor.

37 CFR 1.362(d) sets forth the time periods whenthe maintenance fees for a utility patent can be paid

Rev. 08.2017, January 20182500-3

§ 2506MAINTENANCE FEES

without surcharge. Those periods, referred togenerally as the “window period,” are the 6-monthperiods preceding each due date. The “due dates”are defined in 35 U.S.C. 41(b). The window periodsare (1) 3 years to 3 1/2 years after the date of issuefor the first maintenance fee payment, (2) 7 years to7 1/2 years after the date of issue for the secondmaintenance fee payment, and (3) 11 years to 11 1/2years after the date of issue for the third and finalmaintenance fee payment. A maintenance fee paidon the last day of a window period can be paidwithout surcharge. The last day of a window periodis the same day of the month the patent was granted3 years and 6 months, 7 years and 6 months, or 11years and 6 months after grant of the patent.

37 CFR 1.362(e) sets forth the time periods whenthe maintenance fees for a utility patent can be paidwith surcharge. Those periods, referred to generallyas the “grace period,” are the 6-month periodsimmediately following each due date. The graceperiods are (1) 3 1/2 years and through the day ofthe 4th anniversary of the grant of the patent, (2) 71/2 years and through the day of the 8th anniversaryof the grant of the patent and, (3) 11 1/2 years andthrough the day of the 12th anniversary of the grantof the patent. A maintenance fee may be paid withthe surcharge on the same date (anniversary date)the patent was granted in the 4th, 8th, or 12th yearafter grant to prevent the patent from expiring.

Maintenance fees for a reissue patent are due basedupon the schedule established for the original utilitypatent. The filing of a request for ex parte or interpartes reexamination and/or the publication of areexamination certificate does not alter the scheduleof maintenance fee payments of the original patent.

If the day for paying a maintenance fee falls on aSaturday, Sunday, or a federal holiday within theDistrict of Columbia, the maintenance fee may bepaid on the next succeeding day that is not aSaturday, Sunday, or federal holiday. For example,if the window period for paying a maintenance feewithout a surcharge ended on a Saturday, Sunday,or a federal holiday within the District of Columbia,the maintenance fee can be paid without surchargeon the next succeeding day that is not a Saturday,Sunday, or a federal holiday within the District ofColumbia. Likewise, if the grace period for paying

a maintenance fee with a surcharge ended on aSaturday, Sunday, or a federal holiday within theDistrict of Columbia, the maintenance fee can bepaid with surcharge on the next succeeding day thatis not a Saturday, Sunday, or a federal holiday withinthe District of Columbia. In the latter situation, thefailure to pay the maintenance fee and surcharge onthe next succeeding day that is not a Saturday,Sunday, or a federal holiday within the District ofColumbia will result in the patent expiring on a date(4, 8, or 12 years after the date of grant) earlier thanthe last date on which the maintenance fee andsurcharge could be paid. This situation results fromthe provisions of 35 U.S.C. 21, but those provisionsdo not extend the expiration date of the patent if themaintenance fee and any required surcharge are notpaid when required. For example, if the grace periodfor paying a maintenance fee with a surcharge endedon a Saturday, the maintenance fee and surchargecould be paid on the next succeeding business day,e.g., Monday, but the patent will have expired atmidnight on Saturday if the maintenance fee andsurcharge were not paid on the following Monday.Therefore, if the maintenance fee and any applicablesurcharge are not paid, the patent will expire as ofthe end of the grace period as listed above. A patentthat expires for failure of payment will expire on theanniversary date the patent was granted in the 4th,8th, or 12th year after the grant.


2510 Submission of Maintenance FeePayments and Documents [R-08.2017]

A listing of available payment options and currentmailing addresses is available on the USPTO websiteat www.uspto.gov/PatentMaintenanceFees.

I. SUBMISSION OVER THE INTERNET

Maintenance fee payments can be made quickly andeasily over the Internet at www.uspto.gov byelectronic funds transfer (EFT), credit card or depositaccount payment methods. Maintenance feepayments cannot be submitted by using EFS-Web.Maintenance fees paid online are through the PatentM a i n t e n a n c e F e e s S t o r e f r o n t(https://fees.uspto.gov/MaintenanceFees). See

2500-4Rev. 08.2017, January 2018


http://www.uspto.gov/PatentMaintenanceFees

http://www.uspto.gov/

https://fees.uspto.gov/MaintenanceFees

MPEP § 509 and § 2522 for additional informationpertaining to payments by credit card and paymentsby deposit account. Payment receipts for allpayments submitted over the Internet are availableimmediately in the Patent Maintenance FeesStorefront after the payment is processed. Receiptsfor bulk file payments of maintenance fees willinclude a listing of accepted payments for eachpatent maintained in force as well as a listing of anypayments that could not be accepted with anexplanation why. Note that the bulk file paymentoption can only be done online using the PatentMaintenance Fees Storefront.

II. SUBMISSION BY MAIL

Maintenance fee payments not electronicallysubmitted over the Internet, and correspondencerelated to maintenance fees may be addressed to:

Director of the United States Patent and TrademarkOfficeAttn: Maintenance Fee2051 Jamieson Avenue, Suite 300Alexandria, Virginia 22314

37 CFR 1.366(b) provides that the certificate ofmailing procedures of 37 CFR 1.8 or the mailing byPriority Mail Express® provisions of 37 CFR 1.10may be utilized in paying maintenance fees. Thespecific requirements of either 37 CFR 1.8 or 1.10must be fully complied with if the benefits of eitherare desired. See MPEP § 512 and § 513.

III. SUBMISSION BY FACSIMILE

Payment of a maintenance fee is accepted viafacsimile to the fax number stated on theMaintenance Fee Transmittal Form (SB/45), whencharged to a deposit account or to a credit card.Credit Card Payment Form (PTO-2038) should beused if payment is made by credit card. See MPEP§ 509 and § 2522. In addition, requests pertainingto post-issuance documents, such as change ofcorrespondence address, assignment of fee address,etc., may be submitted by facsimile.

37 CFR 1.366(b) provides that the certificate oftransmission procedure of 37 CFR 1.8 may beutilized in paying maintenance fees. The specificrequirements of 37 CFR 1.8 must be fully complied

with if the benefits thereof are desired. See MPEP§ 512.

IV. SUBMISSION BY HAND DELIVERY

Maintenance fee payments may be hand-carried tothe Office of Finance receptionist in Suite 300 ofthe Carlyle Place Building, 2051 Jamieson Avenue,Alexandria, VA 22314. Although the receptionistwill not process the maintenance fee payment, if thepayment is delivered with an itemized postcard, thereceptionist will provide a delivery receipt by datestamping the postcard. The maintenance fee paymentshould be placed in an envelope withMAINTENANCE FEE written in dark ink acrossthe envelope.


2515 Information Required for Submissionof Maintenance Fee Payment [R-07.2015]

37 CFR 1.366 Submission of maintenance fees.

(a) The patentee may pay maintenance fees and anynecessary surcharges, or any person or organization may paymaintenance fees and any necessary surcharges on behalf of apatentee. A maintenance fee transmittal letter may be signed bya juristic applicant or patent owner. A patentee need not fileauthorization to enable any person or organization to paymaintenance fees and any necessary surcharges on behalf of thepatentee.

(b) A maintenance fee and any necessary surchargesubmitted for a patent must be submitted in the amount due onthe date the maintenance fee and any necessary surcharge arepaid. A maintenance fee or surcharge may be paid in the mannerset forth in § 1.23 or by an authorization to charge a depositaccount established pursuant to § 1.25. Payment of amaintenance fee and any necessary surcharge or theauthorization to charge a deposit account must be submittedwithin the periods set forth in § 1.362(d), (e), or (f). Anypayment or authorization of maintenance fees and surchargesfiled at any other time will not be accepted and will not serveas a payment of the maintenance fee except insofar as a delayedpayment of the maintenance fee is accepted by the Director inan expired patent pursuant to a petition filed under § 1.378. Anyauthorization to charge a deposit account must authorize theimmediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than therequired amount, payment in a manner other than that set forthin § 1.23, or in the filing of an authorization to charge a depositaccount having insufficient funds will not constitute paymentof a maintenance fee or surcharge on a patent. The proceduresset forth in § 1.8 or § 1.10 may be utilized in paying maintenancefees and any necessary surcharges.

Rev. 08.2017, January 20182500-5


(c) In submitting maintenance fees and any necessarysurcharges, identification of the patents for which maintenancefees are being paid must include the patent number, and theapplication number of the United States application for the patenton which the maintenance fee is being paid. If the paymentincludes identification of only the patent number (i.e., does notidentify the application number of the United States applicationfor the patent on which the maintenance fee is being paid), theOffice may apply the payment to the patent identified by patentnumber in the payment or may return the payment.

(d) Payment of maintenance fees and any surcharges shouldidentify the fee being paid for each patent as to whether it is the3 1/2-, 7 1/2-, or 11 1/2-year fee, whether small entity status isbeing changed or claimed, the amount of the maintenance feeand any surcharge being paid, and any assigned customernumber. If the maintenance fee and any necessary surcharge isbeing paid on a reissue patent, the payment must identify thereissue patent by reissue patent number and reissue applicationnumber as required by paragraph (c) of this section and shouldalso include the original patent number.

(e) Maintenance fee payments and surcharge paymentsrelating thereto must be submitted separate from any otherpayments for fees or charges, whether submitted in the mannerset forth in § 1.23 or by an authorization to charge a depositaccount. If maintenance fee and surcharge payments for morethan one patent are submitted together, they should be submittedon as few sheets as possible with the patent numbers listed inincreasing patent number order. If the payment submitted isinsufficient to cover the maintenance fees and surcharges forall the listed patents, the payment will be applied in the orderthe patents are listed, beginning at the top of the listing.

(f) Notification of any change in status resulting in loss ofentitlement to small entity status must be filed in a patent priorto paying, or at the time of paying, the earliest maintenance feedue after the date on which status as a small entity is no longerappropriate. See § 1.27(g).

(g) Maintenance fees and surcharges relating thereto willnot be refunded except in accordance with §§ 1.26 and 1.28(a).

37 CFR 1.366 establishes the guidelines andprocedures for submission of maintenance fees,including any necessary surcharges. The patenteemay pay maintenance fees and any necessarysurcharges or any person or organization may paymaintenance fees and any necessary surcharges onbehalf of the patentee without filing in the Officeevidence of authorization by the patentee to paymaintenance fees. This will enable patentees to paythe maintenance fees and any necessary surchargesthemselves or authorize some person or organizationto pay maintenance fees and any necessarysurcharges on their behalf. No verification of theauthority to pay maintenance fees and any necessarysurcharges in a particular patent will be made by theOffice. While anyone may pay the maintenance feesand any necessary surcharges on a patent, if the

payment is accepted by the Office, any Office noticesrelating to maintenance fees and any necessarysurcharges will be mailed to the “fee address” setforth in 37 CFR 1.363. If the payment is not acceptedby the Office, it will be returned to the person whosubmitted the payment if a return address isavailable. It is strongly recommended that the payorshould include a return address along with his or hertelephone number since the Office may contact thepayor in some instances when it is unclear to whichpatent the fees are to be applied. See MPEP § 2530.

A maintenance fee and any necessary surcharge fora patent must be submitted in the amount due on thedate the maintenance fee and any necessarysurcharge are paid, and at the proper time, i.e., withinthe periods set forth in 37 CFR 1.362. If the amountof the maintenance fee is correct on the date it ispaid and credited to the patent, a later change in themaintenance fees to reflect a new fee amount willnot require a modification in the amount paid.

37 CFR 1.366(c) provides that a maintenance feepayment must include the patent number and theapplication number on which the maintenance feeis being paid. If the payment includes identificationof only the patent number (i.e., does not identify theapplication number for the patent on which themaintenance fee is being paid), the Office may applythe payment to the patent identified by patent numberin the payment or may return the payment. SeeMPEP § 2530. The application number required tobe submitted is not that of a prior parent application,but rather the application number of the actualapplication that matured into the patent for whichmaintenance fees are to be paid. If the maintenancefee and any necessary surcharge is being paid on areissue patent, the application number required isthat of the reissue application.

If a patent expires because the maintenance fee andany necessary surcharge have not been paid in themanner required by 37 CFR 1.366, the patenteecould proceed under 37 CFR 1.378 (see MPEP §2590), if appropriate, or could file a petition under37 CFR 1.377 (see MPEP § 2580) within the periodset therein seeking to have the maintenance feeaccepted as timely even though not all of the requiredidentifying data was present prior to expiration ofthe grace period.

2500-6Rev. 08.2017, January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 2515

Under 37 CFR 1.366(d), the following informationshould also be submitted for each patent on whicha maintenance fee or surcharge is paid (37 CFR1.366(d)):

(A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 yearfee);

(B) the amount of the maintenance fee and anysurcharge being submitted;

(C) any assigned customer number; and

(D) whether entity status is being changed orclaimed with the payment.

Where the payment is a maintenance fee and anynecessary surcharge on a reissue patent, in additionto the information requested for all payments, it isrequested that the original patent number befurnished. Although the submission of theinformation requested under 37 CFR 1.366(d) is notmandatory, it would expedite the processing ofmaintenance fee payments.

The Maintenance Fee Transmittal Form, PTO/SB/45should be used when submitting maintenance feesby mail or by facsimile transmission. This form isavailable, upon request, from the Maintenance FeeBranch. It is also available from the USPTO website(www.uspto.gov/patent/patents-forms#patent).

The Office processes fees in the order in which theyare presented. If the payment submitted isinsufficient to cover the maintenance fees andsurcharges for all patents listed, and there is nogeneral authorization to charge a deposit account,the payment will be applied in the order the patentsare listed, beginning at the top of the listing.


2520 Maintenance Fee Amounts [R-08.2017]

37 CFR 1.20(e)-(h) sets the fee amounts for themaintenance fees and the grace period surcharge.The maintenance fee amounts are subject toadjustment to reflect fluctuations occurring in theConsumer Price Index pursuant to 35 U.S.C. 41(f).The maintenance fee amounts (37 CFR 1.20(e)-(h))are subject to a 50% reduction for small entities

pursuant to 35 U.S.C. 41(h) and a 75% reduction formicro entities. The Maintenance Fee Branch maybe contacted or the USPTO Fee Information website(www.uspto.gov/Fees) may be accessed for thecurrent maintenance fee amounts.

The term of a patent might be shortened, e.g., by aterminal disclaimer. If a patent will expire part waybetween the due dates set in 35 U.S.C. 41(b), orbetween the latest due date and the term set in 35U.S.C. 154, it is still required that the entiremaintenance fee amount for the due date be paid.The maintenance fee amount cannot be prorated tocover only the amount of time past the due datebefore the patent expires.

37 CFR 1.366(g) provides that maintenance fees andsurcharges relating thereto will not be refundedexcept in accordance with 37 CFR 1.26 and 1.28(a).A patentee cannot obtain a refund of a maintenancefee that was due and payable on the patent. Anyduplicate payment will be refunded to the feesubmitter.

2521 [Reserved]

2522 Methods of Payment [R-08.2017]

The method of payment for the maintenance fee andany necessary surcharge is set forth in 37 CFR 1.23.The payment shall be made in U.S. dollars and inthe form of a cashier’s or certified check, Treasurynote, national bank notes, or United States PostalService money order as provided in 37 CFR 1.23(a).If the maintenance fee and any necessary surchargeis sent in any other form, the Office may delay orcancel the credit until collection is made. Forexample, a personal or other uncertified check drawnon a U.S. bank that is not immediately negotiable,e.g., because it lacks a signature or due to insufficientfunds, will not constitute payment of a maintenancefee and/or surcharge.

The maintenance fee can be charged to a credit cardas set forth in 37 CFR 1.23(b), but credit for thepayment is subject to actual receipt of the fee by theOffice. Credit Card Payment Form (PTO-2038)should be used for payment of fees by credit card

Rev. 08.2017, January 20182500-7


http://www.uspto.gov/patent/patents-forms#patent

http://www.uspto.gov/Fees

unless the payment is submitted over the Internet.If credit card information is provided on a form ordocument other than the form provided by the Officefor the payment of fees by credit card, the Officewill not be liable if the credit card number becomespublic knowledge. See MPEP § 509.

Any remittance from a foreign country must bepayable and immediately negotiable in the UnitedStates for the full amount of the maintenance feeand/or surcharge required.

37 CFR 1.366(b) provides that maintenance fees andany necessary surcharge may be paid byauthorization to charge a deposit account establishedpursuant to 37 CFR 1.25. The authorization to chargethe deposit account must be submitted within anappropriate window or grace period and must belimited to maintenance fees and surcharges payableon the date of submission. The authorization tocharge the deposit account cannot be submitted priorto the third, seventh, or eleventh year after grant ofthe patent. If an authorization to charge a depositaccount were submitted to pay the maintenance feedue at 3 years and 6 months after grant, a newauthorization to charge a deposit account or otherform of payment will have to be submitted at theappropriate time for each of the maintenance feesdue at 7 years and 6 months and 11 years and 6months. Any payment or authorization filed at anytime other than that set forth in 37 CFR 1.362(d),(e), or (f) will not serve as a payment of themaintenance fee, except insofar as a delayedpayment of the maintenance fee is accepted by theCommissioner pursuant to 37 CFR 1.378. See MPEP§ 2590. A payment of less than the required amount,a payment in a manner other than that set forth in37 CFR 1.23, or the filing of an authorization tocharge a deposit account having insufficient funds,will not constitute payment of a maintenance fee ona patent. The authorization is required to permit theimmediate charging of the maintenance fee to thedeposit account. An authorization would be improperif it only authorized the maintenance fee to becharged at a later date, e.g., on the last possible dayof payment without surcharge. Such an authorizationwould not serve as payment of the maintenance fee.Any payment which fails to result in the entire properamount of the maintenance fee being present on the

due date will not constitute payment of themaintenance fee.

Maintenance fee payments and any surchargesrelating thereto must be submitted separately fromany other payments for fees or charges, whethersubmitted in the manner set forth in 37 CFR 1.23 orby authorization to charge a deposit account. See 37CFR 1.366(e). Maintenance fee payments andsurcharge payments relating thereto that arecommingled with payments for other fees or charges,e.g., application filing fees, issue fees, documentsupply fees, etc., will not be accepted. Maintenancefees require processing by a separate area of theOffice and are not processed in the same manner asother fees and charges. Maintenance fees for anumber of patents can be submitted together in onesubmission and one payment. 37 CFR 1.366(e)specifies that if maintenance fee payments for morethan one patent are submitted together, they shouldbe submitted on as few sheets as possible, listing thepatent numbers in increasing patent number order.If the payment submitted is insufficient to cover themaintenance fees and any surcharges for all the listedpatents, the payment will be applied in the order thepatents are listed. In such a circumstance themaintenance fee and any surcharge for one or moreof the last listed patents will not be paid.

Money orders and checks must be made payable tothe Director of the United States Patent andTrademark Office. (Checks made payable to theCommissioner of Patents and Trademarks willcontinue to be accepted. See 37 CFR 1.23(a)).Remittances from foreign countries must be payableand immediately negotiable in the United States forthe full amount required.


2530 Special Acceptance of Maintenance FeePayments Containing Informalities[R-07.2015]

It is strongly recommended that a maintenance feesubmission by mail or facsimile include both atelephone number and a mailing address for the feesubmitter because, provided the fee is sufficient, the

2500-8Rev. 08.2017, January 2018


Office may attempt to contact the submitter bytelephone and/or by mail to confirm the patent towhich the fee is to be applied. If the Office speciallyaccepts a payment under any one of scenarios I – IIIbelow, a Notice of Special Acceptance of PatentMaintenance Fee (PTO-2143) will be mailed to thesubmitter that identifies the patent number andapplication number to which the maintenance feewas applied and requests the submitter to verify thatthe payment was applied as intended. If the paymentwas not applied to the intended patent, a petition(such as a petition under 37 CFR 1.377) must befiled. If the petition is not filed within 2 months ofthe date of the notice (PTO-2143), the petition maybe dismissed as untimely, and relief may have to bepursued under 37 CFR 1.378(a-c).

I. PATENT NUMBER SUPPLIED BUT NOAPPLICATION NUMBER SUPPLIED

If a maintenance fee payment identifies only thepatent number (i.e., does not identify the applicationnumber for the patent on which the maintenance feeis being paid), the Office may apply the payment tothe patent identified by the patent number in thepayment or may return the payment. See 37 CFR1.366(c).

II. PATENT NUMBER AND APPLICATIONNUMBER SUPPLIED BUT THEY DO NOTCORRESPOND

When a patent number and an application numberare both supplied, but they do not correspond to thesame patent, the Office will generally apply thepayment to the patent identified by the patentnumber, if possible. Even if the payment is sufficientand timely to pay the maintenance fee due in thepatent identified by the patent number, the Officemay return the payment if additional information onthe payment submission is inconsistent with thepatent identified by the patent number. The Officemay even apply the payment to the patent identifiedby the application number if the additionalinformation corroborates that patent. Such may bethe case, for example, where the fee submitter is theaddressee named in the correspondence address orfee address of the patent identified by the applicationnumber.

III. NO PATENT NUMBER SUPPLIED BUTAPPLICATION NUMBER SUPPLIED

If a maintenance fee is due on the patent identifiedby the application number and the paymentsubmitted is sufficient, the Office may apply thepayment to the patent (provided additionalcorroborating information is present) or may returnthe payment.

2531 Payment Late or Insufficient[R-07.2015]

Examples of when a payment of maintenance feesand any necessary surcharges will be considered tobe late or insufficient include instances when:

(A) Though a payment was received, additionalfunds are required due to surcharge or fee increase;

(B) Though a payment was received in anamount for small entity, the patented file records donot indicate that an assertion of small entity statuswas received; or

(C) The payment was received after the patentexpired.

If the Office considers a payment to be late orinsufficient, a notice (e.g., a Notice ofNon-Acceptance of Patent Maintenance Fee(PTO-2142)) will be sent to the “fee submitter.”Reply to the notice is required prior to expiration ofthe grace period provided by 37 CFR 1.362(e) inorder to avoid the expiration of the patent. If a replyis not received prior to expiration of the patent, thenan appropriate petition under 37 CFR 1.377 or 37CFR 1.378 is required. See MPEP § 2580 and §2590.

If a payment is deemed insufficient because thepayment was submitted in a discounted amount butentitlement to the entity status (small or micro)corresponding to the discounted amount was notestablished, an Underpayment Notice orNon-Acceptance Notice will be mailed to the feesubmitter. See MPEP § 2550 for information onestablishing or changing an entity status for thepurpose of paying a maintenance fee.

Rev. 08.2017, January 20182500-9


2532 Duplicate Payments [R-08.2017]

In the event a maintenance fee is submitted(hereafter, duplicate payment) in the required amount(including any necessary surcharge) within thepayment window for the patent identified forpayment, but the same maintenance fee for thatpatent was already paid by a previous fee submitter(hereafter, first fee submitter), the Office intends totreat the duplicate payment from the second feesubmitter as follows:

(A) If the duplicate payment does not complywith 37 CFR 1.366(c) by not containing both thepatent number and the corroborating applicationnumber, the Office will return the duplicate paymentto the second fee submitter with an indication thatthe maintenance fee for the patent was already paid.

(B) If the duplicate payment does comply with37 CFR 1.366(c) by containing both the patentnumber and the corroborating application number,the Office will verify that the first payment wasproperly processed.

(1) If the first payment was properlyprocessed, the Office will return the duplicatepayment to the second fee submitter. In this eventthe returned payment will be accompanied byidentification of the first fee submitter.

(2) If a review of the Office record of thefirst maintenance fee payment reveals that the firstpayment was not properly processed (e.g., did notcomply with 37 CFR 1.366(c) or was not speciallyaccepted in accordance with MPEP § 2530), theOffice will attempt to determine whether the firstpayment should have been applied to a patent otherthan the patent identified under 37 CFR 1.366(c) bythe second fee submitter. Based on this determinationthe Office will: (a) attempt to apply the duplicatepayment (and retract the first payment); or (b) returnthe duplicate payment to the second fee submitterwith identification of the first fee submitter.


2540 Fee Address for Maintenance FeePurposes [R-08.2017]

37 CFR 1.363 Fee address for maintenance fee purposes.

(a) All notices, receipts, refunds, and other communicationsrelating to payment or refund of maintenance fees will bedirected to the correspondence address used during prosecutionof the application as indicated in § 1.33(a) unless:

(1) A fee address for purposes of payment ofmaintenance fees is set forth when submitting the issue fee, or

(2) A change in the correspondence address for allpurposes is filed after payment of the issue fee, or

(3) A fee address or a change in the “fee address” isfiled for purposes of receiving notices, receipts and othercorrespondence relating to the payment of maintenance feesafter the payment of the issue fee, in which instance, the latestsuch address will be used.

(b) An assignment of a patent application or patent doesnot result in a change of the “correspondence address” or “feeaddress” for maintenance fee purposes.

(c) A fee address must be an address associated with aCustomer Number.

Generally, notices, receipts, and othercommunications relating to the payment of amaintenance fee will be directed to thecorrespondence address used during the prosecutionof the application, unless a “fee address” for thepurpose of payment of the maintenance fee has beendesignated or a change in the correspondence addresshas been made (see MPEP § 2542). 37 CFR 1.33(d)allows a correspondence address or change theretoto be filed during the enforceable life of the patent.Patentees should ensure that the Office is properlynotified of the proper “fee address” to which allmaintenance fee communications are to be directed.

Under the statutes and rules, the Office has no dutyto notify patentee of the requirement to paymaintenance fees or to notify patentee when themaintenance fee is due. It is solely the responsibilityof the patentee to ensure that the maintenance fee ispaid timely to prevent expiration of the patent. Thefailure to receive the reminder notice will not shiftthe burden of monitoring the time for paying amaintenance fee from the patentee to the Office. TheOffice will attempt to assist patentees through themailing of a Maintenance Fee Reminder in the graceperiod. However, the failure to receive aMaintenance Fee Reminder will not relieve thepatentee of the obligation to timely pay theappropriate maintenance fee to prevent expirationof the patent. See Rydeen v. Quigg, 748 F. Supp.900, 16 USPQ2d 1876 (D.D.C. 1990), aff’d 937F.2d 623 (Fed. Cir. 1991) (table), cert. denied, 502

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U.S. 1075 (1992). Maintenance fee correspondencewill not be directed to more than one address.

37 CFR 1.363(c) states that “[a] fee address must bean address associated with a Customer Number.”Only an address represented by a customer numbercan be established as the fee address for maintenancefee purposes. The use of the following form(s) issuggested when requesting establishment of a feeaddress: a current version of the “Fee Address”Indication Form (PTO/SB/47), and if necessary, aRequest for Customer Number (PTO/SB/125). If acustomer number was previously acquired from theOffice for the address being designated as the feeaddress, that customer number should be entered onthe “Fee Address” Indication Form (PTO/SB/47) tomake the fee address designation. If no customernumber was previously acquired from the Office forthe address being designated as the fee address, thenthe “Fee Address” Indication Form (PTO/SB/47)should be accompanied by a completed Request forCustomer Number (form PTO/SB/125). See MPEP§ 403 concerning customer number practice.

It is recommended that only a current version of the“Fee Address” Indication Form (PTO/SB/47)available from the USPTO website(www.uspto.gov/patent/patents-forms) be usedwhen designating a fee address.

At the time of issue fee payment, applicants maydesignate a fee address by submitting a “FeeAddress” Indication Form (PTO/SB/47) as anattachment to the Issue Fee Transmittal (PTOL-85B).After issue fee payment, applicants may designatea fee address by submitting a “Fee Address”Indication Form (PTO/SB/47), and if necessary, aRequest for Customer Number (PTO/SB/125), tothe address specified on the “Fee Address” IndicationForm (PTO/SB/47).

All fee addresses established at the Office will berepresented by a customer number, even if the feeaddress designation lacks an explicit request that acustomer number be used for this purpose (e.g., inthe event that an outdated “Fee Address” IndicationForm (PTO/SB/47), or equivalent form, is submittedwithout an accompanying Request for CustomerNumber (PTO/SB/125)).

The current version of the “Fee Address” IndicationForm (PTO/SB/47) is available upon request fromthe Maintenance Fee Branch and from the USPTOwebsite (www.uspto.gov). The Request forCustomer Number (PTO/SB/125) is available uponrequest from the Electronic Business Center andfrom the USPTO website (www.uspto.gov).Requests for the establishment of a fee addressshould be submitted to the Maintenance Fee Branchprior to or at the time of payment of maintenancefees in order to ensure that receipt of payment isdirected to the fee address.

Additional patent numbers may be assigned to acustomer number at any time, upon written request.

2541 [Reserved]

2542 Change of Correspondence Address[R-07.2015]

Unless a fee address has been designated, notices,receipts, and other communications relating to thepatent will generally be directed to thecorrespondence address (37 CFR 1.33) used duringthe prosecution of the application. Practitioners ofrecord when the patent issues who do not wish toreceive correspondence relating to maintenance feesmust change the correspondence address in thepatented file or provide a fee address to which suchcorrespondence should be sent. It is not required thata practitioner file a request for permission towithdraw pursuant to 37 CFR 1.36 solely for thepurpose of changing the correspondence address ina patented file.

The correspondence address should be updated orchanged as necessary to ensure that allcommunications are received in a timely manner. Achange of correspondence address may be made asprovided in pre-AIA 37 CFR 1.33(a) or 37 CFR1.33(a). The correspondence address may be changedas provided in pre-AIA 37 CFR 1.33(a)(1) prior tothe filing of an oath or declaration. After an oath ordeclaration has been executed and filed by at leastone inventor, the correspondence address may bechanged as provided in pre-AIA 37 CFR 1.33(a)(2).

Rev. 08.2017, January 20182500-11


http://www.uspto.gov/patent/patents-forms



Requests for a change of the correspondence addressmay be sent to the Office of Patent ApplicationProcessing during the enforceable life of the patent.To ensure accuracy and to expedite requests forchange to the correspondence address, it is suggestedthat the request include both the patent number andthe application number. The Office form, Changeof Correspondence Address, Application(PTO/SB/122) may be used to request a change ofcorrespondence address in a patent application. TheOffice form, Change of Correspondence Address,Patent (PTO/SB/123) may be used to request achange of correspondence address for an issuedpatent.


2550 Entity Status Discounts [R-08.2017]

I. CLAIMING ENTITLEMENT TO AN ENTITYSTATUS DISCOUNT

Reduced maintenance fees are available for patenteesthat can establish entitlement to small or micro entitystatus.

In order to establish small entity status for thepurpose of paying a maintenance fee, a writtenassertion of entitlement to small entity status mustbe filed prior to or with the maintenance fee paid asa small entity. 37 CFR 1.27(c)(2) specifies who cansign and file the written assertion of small entitystatus. A written assertion of small entity status isonly required to be filed once and will remaineffective until changed. See MPEP §§ 509.02 and509.03 regarding the requirements for qualifying asa small entity and the requirements for making anassertion of small entity status.

In order to establish micro entity status for thepurpose of paying a maintenance fee, a writtencertification of micro entity status must be filed priorto or at the time the maintenance fee is paid in themicro entity amount. A certification of micro entitystatus must be signed by a person authorized under37 CFR 1.33(b). See MPEP § 509.04 regarding therequirements for qualifying as a micro entity as wellas the requirements for certifying micro entity status.

A paper changing the entity status of the patent canbe included with a maintenance fee paymentsubmitted by mail, facsimile, or hand delivery. Formaintenance fee payments to be made over theInternet using the Patent Maintenance FeesStorefront (https://fees.uspto.gov/MaintenanceFees), any change in entity status must be made priorto submitting the payment. Before submitting apayment via the Patent Maintenance Fees Storefrontin an entity status different from the entity status ofrecord, it is suggested that the entity statusentitlement document (i.e., the certification of microentity status or written assertion of small entitystatus) or the document for removal of entity status(i.e., notification of loss of entitlement to microentity status under 37 CFR 1.29(i) and/or notificationof loss of entitlement to small entity status under 37CFR 1.27(g)(2)) as appropriate, be filed by eithermaking the entity status change via Private PAIRusing the “Update” Entity Status feature or faxingthe document to 571-273-6500 (the maintenance feetransmittal fax number). In order to access PrivatePAIR you must: (1) be a registered patentattorney/agent, an independent inventor, or a persongranted limited recognition, (2) have a customernumber; and (3) have a digital PKI certificate.(Contact the Electronic Business Center (EBC) at866-217-9197 or [email protected] for informationrelating to Private PAIR including how to updateentity status via Private PAIR.)

The refund provisions of 37 CFR 1.28(a) for latersubmitted small entity assertions do apply tomaintenance fees. However, the process in 37 CFR1.28(a) for later establishment of small entity statusis not applicable to later submitted micro entitycertifications. Accordingly, no refunds are availablefor later establishment of micro entity status.

II. REMOVAL OF ENTITY STATUS

Notification of any change in status resulting in lossof entitlement to an entity status must be filed in apatent prior to paying, or at the time of paying, theearliest maintenance fee due after the date on whichstatus as a small or micro entity is no longerappropriate. 37 CFR 1.27(g)(2) requires that anotification of loss of entitlement to small entitystatus be in the form of a specific writtennotification, rather than only payment of the

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undiscounted fee. Similarly, 37 CFR 1.29(i) providesthat notification of a loss of entitlement to microentity status must be filed in the application or patentprior to paying, or at the time of paying, any fee afterthe date on which status as a micro entity is no longerappropriate. See MPEP § 509.04(e) for furtherinformation regarding notifying the Office of a lossof entitlement to micro entity status, includingnotifying the Office of a loss of entitlement to bothmicro and small entity status. All notifications to theOffice regarding loss of entity status must be signedby a party identified in 37 CFR 1.33(b). 37 CFR1.366(f) serves as a reminder to patentees of thenecessity to check for the loss of small entity statusprior to paying each maintenance fee on a patent.This is also a requirement of 37 CFR 1.27(g).Similarly 37 CFR 1.29(g) serves as a reminder ofthe necessity to check for the loss of micro entitystatus prior to paying any fee in the micro entityamount.

If status as a small or micro entity has beenpreviously established by filing an assertion of smallentity status or certification of micro entity status,and such status is checked and found to be proper,no notification is required. It is not necessary to filea new assertion establishing small or micro entitystatus at this point if the status as a small or microentity has been established and is still proper. Afterestablishing small or micro entity status, it is notnecessary to file a new assertion of small entity statusor certification of micro entity status, even if rightshave been transferred from one small entity toanother, or from one micro entity to another. Therequirement is to notify the Office of the loss ofentitlement and to pay the maintenance fee in theproper amount, where appropriate.

III. PAYMENTS NOT MATCHING THE ENTITYSTATUS OF RECORD

If a payment is submitted that conflicts with theOffice record of the patentee’s entity status, a noticerelating to entity status will be sent to the feesubmitter. An Overpayment Notice will be sent ifOffice records indicate establishment of an entitystatus (small or micro) entitling the patentee to areduction in the fee amount submitted. AnUnderpayment Notice will be sent if Office recordsindicate that the patentee has not established

entitlement to the entity status (small or micro)corresponding to the discounted amount submitted.

Where an Overpayment Notice is sent, the requiredreply depends on whether the entity status of recordis correct. If the patentee determines entitlement tothe entity status of record no longer exists or cannotbe verified, the appropriate loss of entitlementnotification must be filed. See 37 CFR 1.27(g)(2)regarding notification of loss of entitlement to smallentity status. See 37 CFR 1.29(i) regardingnotification of loss of entitlement to micro entitystatus. The loss of entitlement notification must befiled by mail, facsimile, or EFS-Web because theonline payment system cannot accept entity statusdocuments. A non-extendable ONE MONTH periodfrom the mailing date of the notice will be providedfor filing a notification of loss of entitlement to smallor micro entity status. However, if additional moneyis required to complete an undiscounted payment ofthe maintenance fee and any required surchargeunder 37 CFR 1.362(e), the reply (including theadditional money and the loss of entity statusentitlement notice) must be filed within the earlierof: (A) the non-extendable ONE MONTH periodfrom the mailing date of the notice; or (B) any timeremaining under 37 CFR 1.362, including the graceperiod provided by 37 CFR 1.362(e). Absent a timelyreply to the Overpayment Notice, the Office willapply the maintenance fee in the reduced amountcorresponding to the entity status of record andrefund the overpayment amount. Accordingly, if thepatentee is actually entitled to the entity status ofrecord, no reply to the Overpayment Notice isnecessary.

Where an Underpayment Notice is sent, the requiredreply depends on whether the entity status of recordis correct. If the patentee determines that the entitystatus of record is correct, the reply including theadditional money required for a sufficient paymentin the correct higher amount, including any necessarysurcharge under 37 CFR 1.362(e), must be timelyfiled. If the patentee determines the entity status ofrecord is not correct, the reply must include anyadditionally required money including any necessarysurcharge under 37 CFR 1.362(e), and theappropriate entity status document (e.g., writtenassertion of small entity status under 37 CFR 1.27or certification of micro entity status under 37 CFR

Rev. 08.2017, January 20182500-13


1.29). The entity status document must be filed bymail, facsimile, or EFS-Web because the onlinepayment system (i.e., the Patent Maintenance FeesStorefront (https://fees.uspto.gov/MaintenanceFees)) cannot accept entity status documents.Whether or not the entity status of record is correct,the reply must be filed within the earlier of: (A) anon-extendable ONE MONTH period from themailing date of the notice; or (B) any time remainingunder 37 CFR 1.362, including the grace periodprovided by 37 CFR 1.362(e). Note that if apreviously unpaid surcharge under 37 CFR 1.362(e)has come due by the time the reply is filed, sufficientpayment will require payment of the surcharge aswell as any additional money required to completethe required maintenance fee amount. Absent atimely reply to the Underpayment Notice, the Officewill return the amount received. If the amountreceived was returned, payment of the maintenancefee and any necessary surcharge in the correctamount must be filed within the time remainingunder 37 CFR 1.362, including the grace periodprovided by 37 CFR 1.362(e). Note that an entitystatus document may also be required to be filedwith the payment in order to establish what thecorrect amount is (e.g., if the patentee determinesthat the entity status of record is not correct). If thepayment was returned and there is no time remainingin the grace period provided by 37 CFR 1.362(e), apetition under 37 CFR 1.378 for acceptance of adelayed maintenance fee payment must be filed inorder to seek acceptance of an unintentionallydelayed maintenance fee. See MPEP § 2590.


2560 Revocation of Power of Attorney andWithdrawal of Attorney [R-07.2015]

The revocation or withdrawal of an attorney may besubmitted at any time; however, a revocation orwithdrawal of an attorney filed after issuance of apatent is not normally processed.

It should be noted that an assignment does not actas a revocation of power of attorney for authorizationpreviously given. However, the assignee may revokea previous power of attorney. See 37 CFR 3.71 and3.73.


2570 Maintenance Fee Payment StatusRequests [R-08.2017]

The Maintenance Fee Branch will respond torequests for the maintenance fee payment status ofpatents. Maintenance fee status information for apatent of interest can be obtained over the Internetby entering the patent number and the correspondingapplication number in the appropriate spaces on thew e b p a g e ava i l a b l e a t h t t p s : / /fees.uspto.gov/MaintenanceFees. In addition,maintenance fee status can be requested bytelephone. Telephone status requests are limited totwo patent numbers per telephone call. See MPEP§ 1730 for the telephone number.


2575 Notices [R-07.2015]

Under the statutes and the regulations, the Officehas no duty to notify patentees when theirmaintenance fees are due. It is the responsibility ofthe patentee to ensure that the maintenance fees arepaid to prevent expiration of the patent. The Officewill, however, provide some notices as remindersthat maintenance fees are due, but the notices, errorsin the notices or in their delivery, or the lack ortardiness of notices will in no way relieve a patenteefrom the responsibility to make timely payment ofeach maintenance fee to prevent the patent fromexpiring by operation of law. The notices providedby the Office are courtesies in nature and intendedto aid patentees. The Office’s provision of noticesin no way shifts the burden of monitoring the timefor paying maintenance fees on patents from thepatentee to the Office.

I. PREPRINTED STANDARD NOTICES

The patent grant currently includes a reminder noticethat maintenance fees may be due. The Notice ofAllowance currently includes a reminder notice thatmaintenance fees may be due.

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II. OFFICIAL GAZETTE NOTICE

A notice will appear in each issue of the OfficialGazette which will indicate which patents have beengranted 3, 7, and 11 years earlier, that the windowperiod has opened, and that maintenance feepayments will now be accepted for those patents.

Another Official Gazette notice published afterexpiration of the grace period will indicate any patentwhich has expired due to nonpayment ofmaintenance fees and any patents which have beenreinstated. An annual compilation of such expirationsand reinstatements will also be published.

III. MAINTENANCE FEE REMINDERS

Since patentees are expected to maintain their ownrecord and docketing systems and since it is expectedthat most patentees will pay their maintenance feesduring the window period to avoid payment of asurcharge, the Office will not send any remindernotices to the patentee until after the grace periodhas begun. This will reduce and simplify the mailingof notices but still give patentees an opportunity topay their maintenance fee with surcharge during thegrace period before expiration of their patents. TheOffice will mail any Maintenance Fee Reminder tothe fee address as set forth in 37 CFR 1.363. SeeMPEP § 2540.

IV. RECEIPT NOTICES

Upon request, the Office will issue a receipt forpayment of maintenance fees submitted by mail orfacsimile after entry of the maintenance fee payment.Such a receipt, which is sent to the fee address (ifno fee address, then the correspondence address),will provide an opportunity for the patentee or feesubmitter to check if the Office has properly creditedthe payment.

V. EXPIRATION NOTICES

The Office will mail a Notice of Patent Expirationto the fee address as set forth in 37 CFR 1.363 whenOffice records indicate that a patent has expired forfailure to pay a required maintenance fee.


2580 Review of Decision Refusing to Acceptand Record Payment of a Maintenance FeeFiled Prior to Expiration of Patent[R-07.2015]

37 CFR 1.377 Review of decision refusing to accept andrecord payment of a maintenance fee filed prior to expirationof patent.

(a) Any patentee who is dissatisfied with the refusal of thePatent and Trademark Office to accept and record a maintenancefee which was filed prior to the expiration of the patent maypetition the Director to accept and record the maintenance fee.

(b) Any petition under this section must be filed within twomonths of the action complained of, or within such other timeas may be set in the action complained of, and must beaccompanied by the fee set forth in § 1.17(g). The petition mayinclude a request that the petition fee be refunded if the refusalto accept and record the maintenance fee is determined to resultfrom an error by the Patent and Trademark Office.

(c) Any petition filed under this section must comply withthe requirements of § 1.181(b) and must be signed by an attorneyor agent registered to practice before the Patent and TrademarkOffice, or by the patentee, the assignee, or other party in interest.

37 CFR 1.377 provides a mechanism for review ofa decision refusing to accept and record payment ofa maintenance fee filed prior to the expiration of apatent. 37 CFR 1.377(a) permits a patentee who isdissatisfied with the refusal of the Office to acceptand record a maintenance fee which was filed priorto the expiration of the patent to petition the Directorto accept and record the maintenance fee. Thispetition may be used, for example, in situationswhere an error is present in the identifying datarequired by 37 CFR 1.366(c) with the maintenancefee payment, i.e., either the patent number or theapplication number is incorrect. See MPEP § 2515and § 2530. A petition under 37 CFR 1.377 wouldnot be appropriate where there is a complete failureto include at least one correct mandatory identifieras required by 37 CFR 1.366(c) for the patent sinceno evidence would be present as to the patent onwhich the maintenance fee was intended to be paid.If the maintenance fee payment with an incorrectmandatory identifier was made near the end of thegrace period, the patent might expire since the Officewould not credit the fee to the patent. A petitionunder 37 CFR 1.377 would not be appropriate wherethe patentee paid a maintenance fee on one patent

Rev. 08.2017, January 20182500-15


when the patentee intended to pay the maintenancefee on a different patent but through error identifiedthe wrong patent number and application number.Likewise, a petition under 37 CFR 1.377 would notbe appropriate where the entire maintenance feepayment, including any necessary surcharge, wasnot filed prior to expiration of the patent.

Any petition filed under 37 CFR 1.377 must be filedwithin 2 months of the action complained of, orwithin such other time as may be set in the actioncomplained of. The petition must be accompaniedby the proper petition fee (37 CFR 1.17(g)). Thepetition may include a request that the petition feebe refunded if the refusal to accept and record themaintenance fee is determined to have resulted froman error by the Office.

Any petition filed under 37 CFR 1.377 must complywith the requirements of 37 CFR 1.181(b) and mustbe signed by an attorney or agent registered topractice before the Office, or by the patentee, theassignee, or other party in interest. A person ororganization whose only responsibility insofar asthe patent is concerned is the payment of amaintenance fee is not a party in interest for purposes37 CFR 1.377. If the petition is signed by a personnot registered to practice before the Office, thepetition must indicate whether the person signingthe petition is the patentee, assignee, or other partyin interest. An assignee must comply with therequirements of pre-AIA 37 CFR 3.73(b), forapplications filed prior to September 16, 2012 or 37CFR 3.73(c) for applications filed on or afterSeptember 16, 2012, which are discussed in MPEP§§ 324 and 325, respectively.

Any petition under 37 CFR 1.377 should be markedon the front page of the communication to theattention of the Office of Petitions and addressed asfollows:

Mail Stop PetitionCommissioner for PatentsP.O. Box 1450Alexandria, Virginia 22313-1450


2590 Acceptance of Delayed Payment ofMaintenance Fee in Expired Patent toReinstate Patent [R-08.2017]

37 CFR 1.378 Acceptance of delayed payment of maintenancefee in expired patent to reinstate patent.

(a) The Director may accept the payment of anymaintenance fee due on a patent after expiration of the patentif, upon petition, the delay in payment of the maintenance feeis shown to the satisfaction of the Director to have beenunintentional. If the Director accepts payment of the maintenancefee upon petition, the patent shall be considered as not havingexpired, but will be subject to the conditions set forth in 35U.S.C. 41(c)(2).

(b) Any petition to accept an unintentionally delayedpayment of a maintenance fee must include:

(1) the required maintenance fee set forth in § 1.20(e)through (g);

(2) the petition fee as set forth in § 1.17(m); and

(3) A statement that the delay in payment of themaintenance fee was unintentional. The Director may requireadditional information where there is a question whether thedelay was unintentional.

(c) Any petition under this section must be signed incompliance with § 1.33(b).

(d) Reconsideration of a decision refusing to accept adelayed maintenance fee may be obtained by filing a petitionfor reconsideration within two months of the decision, or suchother time as set in the decision refusing to accept the delayedpayment of the maintenance fee.

(e) If the delayed payment of the maintenance fee is notaccepted, the maintenance fee will be refunded following thedecision on the petition for reconsideration, or after theexpiration of the time for filing such a petition forreconsideration, if none is filed.

37 CFR 1.378(a) provides that the Director of theOffice may accept the payment of any maintenancefee due on a patent based on an expiration of thepatent if, upon petition, the delay in payment of themaintenance fee is shown to the satisfaction of theDirector of the Office to have been unintentional.The appropriate petition fee set forth in 37 CFR1.17(m) must be paid as a condition of acceptingpayment of the maintenance fee. If multiplemaintenance fees due on a single patent have notbeen paid, a separate petition fee is required for eachdelayed maintenance fee payment. A statement thatthe delay in payment of the maintenance fee wasunintentional is also required with respect to each

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delayed maintenance fee payment. While thepatentee can include the statements of unintentionaldelay in a single petition (if desired), a separatepetition fee is required for each delayed maintenancefee payment. If the Director of the Office acceptspayment of the maintenance fee upon petition, thepatent shall be considered as not having expired butwill be subject to the intervening rights andprovisions of 35 U.S.C. 41(c)(2).

Any petition under 37 CFR 1.378(b) should bemarked on the front page of the communication tothe attention of the Office of Petitions and addressedas follows:

Mail Stop PetitionCommissioner for PatentsP.O. Box 1450Alexandria, Virginia 22313-1450

For applications filed on or after September 16,2012, 37 CFR 1.33(b) requires that amendments andother papers be signed by: (1) a patent practitionerof record; (2) a patent practitioner not of record whoacts in a representative capacity under the provisionsof 37 CFR 1.34; or (3) the applicant (37 CFR 1.42).37 CFR 1.33(b) further provides that, unlessotherwise specified, all papers submitted on behalfof a juristic entity must be signed by a patentpractitioner.

For applications filed prior to September 16, 2012,pre-AIA 37 CFR 1.33(b) requires that amendmentsand other papers be signed by: (1) A patentpractitioner of record appointed in compliance withpre-AIA 37 CFR 1.32(b); (2) A patent practitionernot of record who acts in a representative capacityunder the provisions of 37 CFR 1.34; (3) An assigneeas provided for under pre-AIA 37 CFR 3.71(b) ofthis chapter; or (4) All of the applicants (pre-AIA37 CFR 1.41(b)) for patent, unless there is anassignee of the entire interest and such assignee hastaken action in the application in accordance withpre-AIA 37 CFR 3.71 of this chapter. Pursuant to37 CFR 1.31 as revised effective September 16,2012, a juristic entity (e.g., organizational assignee)must be represented by a patent practitioner andtherefore, unless otherwise specified, all paperssubmitted on behalf of a juristic entity on or afterSeptember 16, 2012 must be signed by a patentpractitioner.

37 CFR 1.378(d) provides a mechanism for obtainingreconsideration of a decision refusing to accept amaintenance fee upon petition filed pursuant toparagraph (a). This mechanism is a petition forreconsideration which may be filed within 2 monthsof, or such other time as set in, the decision refusingto accept the delayed payment of the maintenancefee. The decision on the petition for reconsideration,may provide that no further reconsideration or reviewof the matter will be undertaken by the Director ofthe Office. The maintenance fee submitted will berefunded if the delayed payment of the maintenancefee is not accepted. The refund will be madefollowing the decision on the petition forreconsideration if the decision provides that nofurther reconsideration or review of the matter willbe undertaken, or, upon request, after the expirationof the time for filing a petition for reconsideration,if none is filed.

I. UNINTENTIONAL DELAY

Under 35 U.S.C. 41(c)(1), the Director of the Officemay accept late payment of any maintenance feefiled after the 6-month grace period, if the delay inpayment is shown to the satisfaction of the Directorof the Office to have been unintentional. See MPEP§ 711.03(c) for a general discussion of the“unintentional” delay standard.

In addition to the timeliness deadline set forth in thepreceding paragraph, a petition filed under theunintentional standard of 37 CFR 1.378(b) mustinclude:

(A) the required maintenance fee set forth in 37CFR 1.20(e) through (g);

(B) the petition fee set forth in 37 CFR 1.17(m);and

(C) a statement that the delay in payment of themaintenance fee was unintentional.

A person seeking reinstatement of an expired patentshould not make a statement that the delay inpayment of the maintenance fee was unintentionalunless the entire delay was unintentional, includingthe period from discovery that the maintenance feewas not timely paid until payment of themaintenance fee. For example, a statement that thedelay in payment of the maintenance fee was

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unintentional would not be proper when the patenteebecomes aware of an unintentional failure to timelypay the maintenance fee and then intentionally delaysfiling a petition for reinstatement of the patent under37 CFR 1.378.

Petitions to accept unintentionally delayed paymentof a maintenance fee in an expired patent, if expiredfor two years or less, can be processed electronically,and immediately, by the applicant using theEFS-Web version of the SB/66 form found on theUSPTO forms website at www.uspto.gov/patent/patents-forms. An immediate decisionregarding the petitions will be rendered. TheEFS-Web version of the SB/66 form should not beused if applicant wishes the petition to be processedby the Office of Petitions.

If applicant does not want immediate processing,but would prefer to submit the petition to the Officeof Petitions for processing in due course, or if thepatent has been expired for more than two years,applicant should use PTO/SB/66 form found on theUSPTO forms website at www.uspto.gov/patent/patents-forms.

2591 Intervening Rights in ReinstatedPatents [R-08.2012]

Intervening rights in reinstated patents are providedby 35 U.S.C. 41(c)(2) which is reproduced in MPEP§ 2501. No patent, the term of which has beenmaintained as a result of the acceptance of a latepayment of a maintenance fee, shall abridge or affectthe right of any person or his or her successors inbusiness who made, purchased, imported, or usedafter the 6-month grace period but prior to theacceptance of the late maintenance fee anything

protected by the patent, to continue the use orimportation of, or to sell to others to be used or sold,the specific things made, purchased, imported, orused. A court before which such matter is in questionmay provide for the continued manufacture, use,importation, or sale of the thing made, purchased,imported, or used as specified, or for themanufacture, use, importation, or sale of whichsubstantial preparation was made after the 6-monthgrace period but before the acceptance of the latemaintenance fee, and it may also provide for thecontinued practice of any process, practiced, or forthe practice of which substantial preparation wasmade, after the 6-month grace period but prior to theacceptance of the late maintenance fee, to the extentand under such terms as the court deems equitablefor the protection of investments made or businesscommenced after the 6-month grace period butbefore the acceptance of the late maintenance fee.


2595 Forms [R-08.2017]

The following forms are suggested when submittinga maintenance fee or establishing a fee address formaintenance fee purposes. “Maintenance FeeTransmittal Form,” Form PTO/SB 45; and “‘FeeAddress’ Indication Form,” Form PTO/SB/47.

Form PTO/SB/125 (“Request for CustomerNumber”) may be used to request a customernumber. Form PTO/SB/66 (“Petition to AcceptUnintentionally Delayed Payment of MaintenanceFee in an Expired Patent (37 CFR 1.378(b))”) maybe used to file a petition under 37 CFR 1.378(b).

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MPEP Chapter 2500 - Maintenance Fees

Documents

Transcript of MPEP Chapter 2500 - Maintenance Fees