Patents grant inventors exclusive rights to produce and market their creations, but these rights don’t last forever. To maintain the protection provided by a patent, patent owners must stay on top of patent renewal requirements and pay regular patent maintenance fees. Failing to do so can lead to the premature loss of your patent rights.
Why Patent Renewal Matters
Renewing your patent helps preserve your competitive edge in the marketplace for large corporations and small businesses alike. By paying the maintenance fee promptly, you can keep your rights intact, allowing you to fully leverage the commercial benefits of your invention. Failing to renew a patent could result in its expiration, making it difficult to enforce your intellectual property rights in the future. Plus, there is a significant investment of time and money that goes into obtaining an issued patent, and that cannot be recouped once a patent has expired.
Understanding Patent Expiration
Patents are granted for a limited time. Utility patents in the United States, for example, are valid for 20 years from the filing date. However, this protection isn’t automatic for the entire period. To keep a patent in force, patent owners must pay periodic maintenance fees every few years during the life of the patent. Failing to pay these fees will lead to the expiration of the patent before the 20-year term, leaving the invention open to public use. That is, the patent is surrendered to the public domain, and will be free for all to use without recourse to the patent owner.
Once a patent lapses, it cannot be renewed except under limited circumstances. This means that patent owners must adhere to the established payment schedules to avoid the patent lapsing. While it is sometimes possible to reinstate an expired patent by paying the fees due along with a surcharge, relying on this option can be risky, and more expensive.
Moreover, most foreign countries charge maintenance fees (aka, “annuities”) annually over the life span of a patent. As such, there are even more payments to track and process when an owner has a portfolio of international patents in addition to U.S. patents.
Patent Renewal Deadlines
Patent renewal deadlines are structured to ensure that patent owners regularly confirm their interest in maintaining the exclusive rights to their inventions by paying the required maintenance fees. The deadlines for renewal set forth by the United States Patent and Trademark Office (USPTO) are:
- 3.5 years: $800 for small entities, $1,600 for large entities
- 7.5 years: $1,800 for small entities, $3,600 for large entities
- 11.5 years: $3,700 for small entities, $7,400 for large entities
If you miss a deadline, the USPTO allows a 6-month grace period to pay the overdue fees along with a surcharge. However, if the fees are not paid within this grace period, the patent will lapse, and the invention will no longer be protected. A lapsed patent can be difficult to renew, and a petition for reinstatement is required to demonstrate that there was a valid reason for the delay in paying the maintenance fee.
Steps to Renew Your Patent
Renewing your patent is a straightforward process, but IP owners should follow the correct steps to avoid any issues, including:
- Check the fee amount due: Patent maintenance fees vary depending on the size of the entity (large, small, or micro). Know your entity size to determine the correct fee. You can easily check the amount due by visiting the USPTO’s online portal.
- Monitor payment windows: You can pay the maintenance fee up to six months before the due dates. Early payments within this window ensure you meet the deadline without risking a lapse in your patent. Payments made outside of the specified payment window will be rejected.
- Submit the payment: You can pay your patent renewal fees online through the USPTO website. The process allows for secure payments, and you’ll receive a receipt immediately after submitting your fee. For those managing multiple patents, the USPTO fees can be paid in bulk to simplify the process.
- Track and confirm payment: Once the fee is paid, confirm that the payment was successfully processed. You can verify this through the USPTO’s portal, where you’ll also be able to download a receipt for your records.
There are also maintenance fee service providers who will docket, process, and pay your patent maintenance fees for you. While the helps simplify the process, it is still a good practice to periodically review your account with the maintenance fee service provider to make sure all of your patents have been entered into their system, and that you are getting reminders from them (i.e., making sure their emails are white listed for your email spam filter).
Maintaining Patent Fees
Keeping a patent active means paying the correct maintenance fees on or ahead of schedule. As seen above, patent renewal fees increase over time, with different rates based on the entity size, since the fees for large entities are higher than those for small or micro entities.
These fees are adjusted periodically, so check the latest amounts before making payments. Missing a payment can result in surcharges for renewing during the 6-month grace periods.
Consequences of Non-Renewal
As noted above, the required maintenance fees are not paid on time, your patent will lapse, meaning you will lose the exclusive rights to your invention. Once a patent expires, the patented invention enters the public domain, allowing others to use, sell, or modify your invention without your consent or recourse to you.
While it is possible to reinstate an expired patent, the process can be complicated and costly. You must file a petition for reinstatement with the USPTO and pay additional fees, including a surcharge. Reinstatement is not guaranteed and requires a showing of good cause for missing the payment, so it is best to pay maintenance fees in a timely manner and avoid having to go down the reinstatement path.
A lapsed patent can undermine your company’s market position, especially if the invention is central to your business. To avoid these risks, stay proactive in managing your patent’s renewal schedule and fees.
Schedule a Consultation With an Experienced Patent Attorney
With strict deadlines and ever-increasing fees, it’s easy for patent owners to overlook important renewal obligations. Working with an experienced patent attorney can help you stay on track with patent maintenance and avoid costly mistakes.
If you need assistance with maintaining or renewing your patent, or if you have any questions about your intellectual property rights, contact us today to schedule a consultation. Our attorneys are here to provide the guidance you need to protect your invention and maximize its commercial value.
About the Authors
John Woodson is a Registered Patent Attorney who practices in the area of patent prosecution, patent infringement studies and client counseling. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment, laser and optical devices, semiconductor devices, semiconductor processing, hydrocarbon recovery and well logging, mechanical devices, medical devices, and software and Internet related inventions. Mr. Woodson also has extensive experience prosecuting foreign-originated patent applications, and instructing foreign associates on prosecution of U.S. originated patent applications.
