Utility Patents: There are maintenance fees due at 3.5 years, 7.5 years and 11.5 years from the date of issue. The “payment window” opens six months before the due date (earlier payments are not accepted), and closes one year later (that is, 4, 8 or 12 years after issue). If the fee is paid during the “grace period” of six months after the due date, a surcharge is added. If the maintenance fees are not paid before the window closes, the patent expires as of the end of the grace period.

Gizmo

Stephen,

I would love to know this answer as well. My father had a patent that went abandoned because he couldn’t pay the fees. I’ve looked in to this before and I think there may be some recourse if lack of payment has been recent – like within a year or maybe even two. In my father’s case, his has been more like ten. So from what I could tell he is out of luck. But if you find out otherwise, I’d love to know if he can revive it.

Supposedly…there is a way to revive an abandoned patent…but I forgot the details….but then again..you hear of historic inventions where the inventor didn’t make anything because the invention took too long to pay off and the patent was abandoned because the inventor was broke.

Ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

Here is what I had found about it when I was looking for my dad…

http://www.uspto.gov/web/offices/pac/mpep/docum...

Thank you all for the responses.
Margaret,The link you provided was most certainly the answer I was looking for.

from the USPTO:
“(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unavoidable (paragraph (b) of this section) or unintentional (paragraph © of this section) and if the surcharge required by § 1.20(i) is paid as a condition of accepting payment of the maintenance fee. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41©(2). "

Of course now I wonder what they would qualify as “unavoidable” or “unintentional”?
My feeling is I should peruse licensing without reviving the patent and only if I get a deal should I then move forward on the maintenance fees issue.

Would that work or would it be futile to seek licensing without the protection first?

If you decide your going to let the patent expire on purpose and pass the window of opportunity, thats intentional. If your patent attorney forgets to let you know the patent is going to expire if the fees arent paid, that unintentional/unavoidable.

Unintentional: ..accidental, unplanned, inadvertent,not intentional or deliberate.

unavoidable: unable to be avoided

Thanks Gizmo,

I understand the words as per their definition, my concern is whether they will accept reasons as simple as “i didn’t know the fees were due” or “I was broke and could not afford the fees”. From my perspective these reasons are fairly poor excuses, however they do qualify as unintentional and unavoidable, but would the USPTO see it that way?

I guess they will as long as they get their money.
I can’t imagine the government turning down taxes.

“I was broke”, will almost certainly not work. “I didn’t know because I didn’t get the letter from the PTO” is unintentional (but you would have to make a showing that you really didn’t get the letter, such as you notified PTO of change of address, and PTO sent it to the wrong address). “I didn’t pay because I was in a coma in the hospital”, is unavoidable.

Stephen: Your question is a bit difficult to answer. When the maintenance (M) fee payment is missed the patentee (or assignee) can file a USPTO Form SB66 which includes a pre-printed statement that the delay in payment of the M fee was unintentional…and attach the missed payment (as reflected in a current fee schedule)…along with a surcharge of $1640.00 (also per current fee schedule). Note: the surcharge alone currently is $1640. No further explanation is required. If your M fee payment is not more than 24 months overdue, it likely will be accepted and patent reinstated. If not, it won’t.
The surcharge for “unavoidable” (merely $700.00) is extraordinarilly difficult to obtain. Any reason for missing the payment would be in a category that also includes following examples: (1)I was carrying the M fee payment to the mailbox and was squished by an elephant (also requires statement from elephant); (2) I was locked in a cow barn by terrorists (must present sworn statement by terrorists and by cow.) (3.) We were on the space station and we had a problem (also requires for statement from Houston.)
I once succeeded in demonstrating that a DC area client did not get a USPTO mailing due to a regional snowstorm…but had to dig into old USPTO records showing that the US Government Office was closed on the day USPTO outgoing mail was claimed to have been posted but was not picked up by USPS…and the client’s rural roads were covered for a week by 3-4 feet of snow (per county records and statements by Md highway maintenance supervisor..and local postman. No cows, elephants or terrorists were involved.
Don Kelly