This is the eighth article in my series on the patent prosecution process. This article covers the procedures from the Notice of Allowance to paying maintenance fees.
Once the examiner has found an allowable independent claim he or she will issue a Notice of Allowance. This requires the applicant to pay the publication fee (if it has not been paid already) and an issuance fee. Once that is paid, the patent office will print the patent and provide the inventor with a “ribbon copy.” At this point the patent can be enforced against potential infringers. While some attorneys charge $200-$1000 for this post-issuance activity, the Law Office of Michael O’Brien includes this service in the flat fee for patent prosecution.
Maintenance fees are due to keep the patent valid beyond four years, eight years and twelve years after the office grants the patent. Federal regulations set the time periods when the maintenance fees for a utility patent can be paid without having to pay a surcharge. Those periods, referred to generally as the “window period,” are the 6-month periods preceding each due date. The “due dates” are defined by law. The window periods are (1) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (2) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (3) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. A maintenance fee paid on the last day of a window period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted 3 years and 6 months, 7 years and 6 months, or 11 years and 6 months after grant of the patent.
If you are a little slow, there is still a “grace period” to pay the fees with a surcharge without having the patent expire. Those periods, referred to generally as the “grace period,” are the 6-month periods immediately following each due date. The grace periods are (1) 3 1/2 years and through the day of the 4th anniversary of the grant of the patent, (2) 7 1/2 years and through the day of the 8th anniversary of the grant of the patent and, (3) 11 1/2 years and through the day of the 12th anniversary of the grant of the patent. A maintenance fee may be paid with the surcharge on the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant to prevent the patent from expiring.
These fees cannot be paid in advance because they go up every year and are reset in October. Remembering to pay these fees can be difficult, so Registered Patent Attorneys offer to do this for you for a fee. Typically, a maintenance fee costs $200 plus the cost of the fee, and an attorney remember to do this for you.