If you receive an issued patent, it is a big accomplishment to protect your invention. You succeeded in showing the United States Patent and Trademark Office (USPTO) that your invention was useful, novel, and non-obvious. Aside from the business implications to monetize the invention covered by the patent, often overlooked are the mandatory payment of maintenance fees at the 3.5, 7.5, and 11.5 year points after issuance of the patent.
Assouline & Berlowe recently helped a client revive an expired patent for unintentional delay. A big win for the client as he regained his patent rights that were lost. If a patent owner misses the deadline to pay the applicable maintenance fee, there is a six month grace period to pay with added filing fees. After the grace period expires, the patent will become abandoned.
If the failure to pay the maintenance fee was unintentional, the patent owner can petition the USPTO to reinstate the patent due the unintentional delay. Such petitions are generally looked upon favorably (if unintentional) by the USPTO if filed within two years from the deadline. However, if the petition is filed after two years from the deadline, the USPTO in 2020 updated their rules for proving unintentional delay.
The USPTO may ask for additional information to assess the circumstances behind the nature of the unintentional delay. The patent owner will have to demonstrate that the entire duration of the delay was unintentional. However, if any portion of the delay was intentional, the delay will not qualify as unintentional and the request will likely be denied.
Given the value of an issued patent, it is important for patent owners to calendar the maintenance fee deadlines upon receipt of the issued patent. Notably, the maintenance fee deadlines are printed on the inside of the patent deed, both electronically and in hard copy. If a patent maintenance fee deadline is missed unintentionally, it is critical to act promptly and engage knowledgeable patent counsel to petition for reinstatement of the abandoned patent.
If you have questions about your patent or Intellectual Property rights, please contact Florida Bar Board Certified Intellectual Property Attorney Greg Popowitz.
Greg M. Popowitz, Esq.
Board Certified in Intellectual Property Law
Registered Patent Attorney
Miami Tower
100 SE 2nd Street, Suite 3105
Miami, Florida 33131
Main: 305.567.5576
Fax: 305.567.9343
Email: GMP@assoulineberlowe.com
http://www.assoulineberlowe.com/
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