USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
1.9 Consequences of Failure to Pay Annual Fees Patent holders must pay maintenance fees to keep patents in force. The payments are due 3.5, 7.5 and 11.5 years after the date of issue. The USPTO allows payment of each fee six months before the due date but does not allow any other pre-payment of the maintenance fees. Payments that are less than six months past the due date have a surcharge of USD100–500 in addition to the normal fee. Under some circumstances, a patent can be rein- stated after not paying the maintenance fee in a timely manner. The USPTO requires a statement that the delay in payment was unintentional and submission of a petition fee of USD420–2,100 in addition to the required maintenance fees. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights During some post-grant proceedings before the USPTO, the patent holder can amend claims of an issued patent. During ex parte re-exam- ination, the patent holder may amend claims to respond to the USPTO’s findings of substantial new questions of patentability. In an inter partes review (IPR) proceeding, if the challenged claims are determined to be invalid, the patent owner may seek to add substitute claims. At any time before the expiration of the patent, a patent holder may seek reissue of the patent to correct certain errors, such as errors in the draw- ings or specification, or errors in the claimed scope of the invention. No new matter can be added during a reissue. If the reissue is sought within two years of the grant of the original pat- ent, the scope of the claims can be narrowed or enlarged. Otherwise, only amendments that narrow the scope of the claims are permitted.
ment” or “PTA”) for the time of the delay. This extension does not apply to delays resulting from the patent applicant’s actions, including requests for continued examination or appeals. The possible extension for USPTO delays is unlimited. Certain drug products and medical devices can receive annual patent term extensions if the product is undergoing administrative review by the FDA (commonly referred to as “Patent Term Extension” or “PTE”). These extensions are renewable for up to five years. 1.7 Third-Party Rights to Participate in Grant Proceedings Any third party may submit patents, published patent applications or other printed publications as part of a third-party preissuance submission. The submission must include a concise descrip- tion of the asserted relevance of each submit- ted document. These submissions may be made online at the USPTO website. Submissions must be made before the later of six months after pub- lication of the patent application or the date of a USPTO communication rejecting any claims in the application. However, a notice of allowance for the patent application immediately termi- nates the timeframe for third-party submissions. 1.8 Remedies Against Refusal to Grant an Intellectual Property Right During patent prosecution, the USPTO may issue a final rejection of the patent claims. If the applicant wishes to challenge the final rejection, the applicant may request continued examina- tion or may file an appeal to the Patent Trial and Appeal Board (PTAB). The applicant may appeal PTAB decisions to the US Court of Appeals for the Federal Circuit. Further review may be sought from the US Supreme Court through a petition for a writ of certiorari.
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