How to Rescue a Patent That Expired for Failure to Pay Maintenance Fees

By: Mark R. Malek

You may recall that my last article, was directed to the requirement to pay maintenance fees in order to keep your patent alive.  As was discussed in that article, maintenance fees must be paid at 3.5 years, 7.5 years and 11.5 years after the patent has issued.

When someone has not paid a maintenance fee on their issued patent, however, that patent will expire.  Unfortunately, this is a question that we get a lot at our firm.  The story is usually something along the lines of “so I was looking through some old files and noticed that there was a requirement to pay maintenance fees on my patent – what happens if I have not paid them?”  After I tell them that their patent has now expired, the immediate question I get back is “well how do I get it back?”

Well – it’s not cheap, but there is a provision to “revive” a patent that has gone abandoned for failure to pay a maintenance fee.  This can be found in chapter 2590 of the Manual of Patent Examining Procedures.

In short, there are two ways to revive a patent that has gone abandoned for failure to pay maintenance fees.  Both involve filing a petition.  The cheaper of the two petitions is a petition to revive an abandoned patent that has unavoidably gone abandoned, and the second is a petition to revive an abandoned patent that has unintentionally gone abandoned.  In order for the Patent Office to find that the patent has gone unavoidably gone abandoned takes an act of God…no, literally.  It is nearly impossible to get the Patent Office to agree that failure to pay the maintenance fee was unavoidable.  Not having the cash at the time the fee was due is not good enough.  There has to have been something that prevented you from getting the cash to the government such as, for example, a lunatic held you down and would not let you put your payment in the mail (and that this is all documented), or that you can prove that the payment was sent, and the postal service lost it on the way, or some other measure that is completely out of your control.

More than likely, however, you will need to file a petition to revive a patent application that has unintentionally gone abandoned.  The only requirement there is that you check the box on the form that reads, “the failure to pay the fee was unintentional.”  Translation is “my bad.”  If you file such a petition, along with the petition fee, and the maintenance fee, the patent will be revived.

If you have run into this situation, contact your patent attorney to see if you can have your patent revived.  If you have more questions, you can contact me here.