In the United States, once your utility patent is granted, maintaining its validity is crucial for protecting your invention. To keep your patent active, you are required to pay periodic maintenance fees (under 35 U.S.C. § 41(b) and 37 CFR 1.20(e)-(g)) to the USPTO.
If these fees are not paid on time, your patent could abandon, and others could use your invention without consequence. Paying the maintenance fees ensures that your invention remains in force for up to 20 years from the earliest effective filing date. In this article, I explore several rules and regulations around patent maintenance in the United States.
Maintenance Payment Schedule
No Maintenance Fee During Pendency
No maintenance fees are due during the pendency of a patent application. This period lasts from the filing of the application until the patent is granted.
Post-Grant Maintenance
After the patent is granted, maintenance fees are due at three specific time intervals:
- 3.5 years after grant
- 7.5 years after grant
- 11.5 years after grant
The USPTO allows maintenance fees to be paid starting six months before the due date, and late payments are accepted during a six-month grace period with an additional surcharge.
Payment of Maintenance Fees
Maintenance fees are due in advance for each period and must be paid through the USPTO’s Patent Maintenance Fees Storefront.
Forms and Procedures for Maintenance Payments
Form for Payment
The USPTO does not require a separate form for standard maintenance fee payment; it is handled online through the USPTO’s maintenance portal. However, if a petition to accept late payment is needed, specific forms must be filed.
Technical Input
Calculating the Due Date:
The maintenance fee due dates are calculated from the patent grant date. Payments must be made within the specified timeframes to maintain the validity of the patent.
Online Payment:
It is highly recommended to use the USPTO’s online system for maintenance fee payments, ensuring secure payment and instant confirmation receipts.
What Happens If You Miss a Maintenance Payment?
Late Payment
If the maintenance fee is not paid on time, the USPTO allows a 6-month grace period to make the payment along with a late surcharge of $540 for large entities (discounted for small and micro entities). If the payment is not made by the end of the grace period, the patent expires retroactively to the due date.
Reinstatement of Patent
If the maintenance fee and surcharge are not paid within the grace period, the patent will be deemed expired. However, reinstatement is possible under specific circumstances:
- The patent owner must file a petition to accept late payment under 37 CFR 1.378.
- The petition must demonstrate that the delay in payment was unintentional.
- The following fees must be paid:
- Unpaid maintenance fee as set forth in § 1.20(e) through (g)
- Petition fee as set forth in § 1.17(m) ($2,260 for large entities)
If the petition is granted, the patent will be reinstated.
Penalty Structure for Delayed Maintenance Payments
| Particulars | Penalty | Fees (USD) | |||
| Grace Period (Up to 6 months from due date) | Late payment surcharge | ~$540 (Large Entity) | ~$216 (Small Entity) | ~$108 (Micro Entity) | |
| After Grace Period, delay less than or equal to two years (Unintentional Delay) | Petition fee for reinstatement + unpaid fees | ~$2,260 + unpaid maintenance fees | |||
| If no reinstatement petition is filed | Patent considered Abandoned | — |
Discount for Entity Size
The USPTO grants significant discounts based on entity status:
- Small Entity: 60% reduction in maintenance fees
- Micro Entity: 80% reduction in maintenance fees
Correct certification of small or micro entity status is necessary each time a maintenance fee is paid.
Table: USPTO Maintenance Fees for Utility Patents
| Year Due | Large Entity (USD) | Small Entity (USD) | Micro Entity (USD) |
| 3.5 Years | $2,150 | $860 | $430 |
| 7.5 Years | $4,040 | $1,616 | $808 |
| 11.5 Years | $8,280 | $3,312 | $1,656 |
At Dentons Link Legal, we provide comprehensive maintenance and annuity services globally, ensuring timely and efficient management of patent renewals across jurisdictions.
Authors:
Ankur Veerbhan, Associate Vice President - Paralegal Operations
Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.