Posts Tagged ‘manual of patent examining procedures’

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

Friday, 09 March, 2012 23:31 Written by Mark Malek 2 Comments
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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.

 

Patent Maintenance Fees – The Patent Prosecution Process Continues

Friday, 02 March, 2012 23:21 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Great news – you have just received your Notice of Allowance for your patent application.  In the Notice of Allowance, there is a requirement for you to pay an issue fee (unless it has already been paid pursuant to a request for early publication – see Section 1129 of the Manual of Patent Examining Procedures (MPEP)  for more information) as well as an issue fee.  As it currently stands, the combination of the issue fee and the publication fee is about $1100.

The good new is that after you pay the publication fee and the issue fee, you will receive an issued patent.  As you can tell from the picture to the right, this is one of the prettiest looking documents the government has ever produced. Way better than anything I have ever received from the IRS. After you receive your issued patent in the mail, you will notice that the patent process has not exactly ended.  In order to keep your patent valid, you will need to pay maintenance fees.

Information on patent maintenance fees can be found in Chapter 2500 of the MPEP.  In short, in order to keep it alive, you need to pay maintenance fees on your issued patent.  These are due at the 3.5 year mark, the 7.5 year mark, and the 11.5 year mark.  To be specific, the window to pay the first maintenance fee opens at the three year mark and closes at the four year mark.  If the maintenance fee is paid within the first six months of the window being opened, then no surcharge applies which, of course, means that there is a surcharge that applies if the maintenance fee is paid in the last six months of the window.  The same goes for the next two maintenance fees.

If a patent maintenance fee is not paid, the patent will go abandoned, and the invention, as recited in the claims of the patent, will be dedicated to the public.  The current maintenance fees are outlined on the PTO Fee Chart.  As you can imagine, these fees change from time to time, so it is advisable to check the amount of the fee prior to attempting to pay it.    You can pay your maintenance fees on your patent by accessing the maintenance fee page on the PTO website.

Mark R. Malek is a Trademark and Patent Attorney with Zies, Widerman, & Malek in Melbourne Florida

How Do You Amend Your Patent Application After Allowance?

Friday, 10 February, 2012 09:24 Written by Mark Malek 0 Comments
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By: Mark R. Malek

As has often been the case with some of my articles in the past, I like to introduce little practice tips as something interesting happens in my day to day life of prosecuting patent applications.  This past week brought me something interesting.  I received a call from an Examiner on a case that was already allowed.  This was a great case because I was dealing with an Examiner that really tried to take every possible step to help find allowable subject matter and place the application in condition for allowance.  It was not like some he examinations of the past where I was up against an Examiner that was in a rush to issue a Final Office Action.

Needless to say, however, I was a little tense when I received a call from an examiner on a case that was already allowed. As it turned out, the Examiner noticed that the serial number in the reference to the parent application was incorrect. No, that is not a typo – I am referring to the previous case upon which this case relied.  This application was a continuation-in-part application, which allowed our client to claim the benefit of the previously filed application (another post will follow shortly on continuation and continuation-in-part applications). The serial number that was referenced in the application was off by one digit. The issue, however, was that prosecution of the application was already closed. The Examiner had mailed a notice of allowance. After a notice of allowance is mailed, there can be no more amendments to the application. There is, however, a mechanism to make corrections to an application that has already been allowed, but for which the issue fee has not been paid.

The mechanism that allowed us to amend the application after the notice of allowance has been mailed is found in 37 CFR 1.312.  This section of the regulations allows for the introduction of an amendment to the patent application after the mailing of a notice of allowance.  Section 714.16(d) of the Manual of Patent Examining Procedures (MPEP) which, of course, is the bible of patent prosecution, outlines the steps necessary to amend an application after the notice of allowance has been mailed.  In short, you just have to be sure not to introduce new subject matter.  In this particular case, we were merely correcting the serial number of the parent application, so no new subject matter was added.

If the issue fee had already been paid, there is another mechanism to correct a patent. This is found in Section 1400 of the MPEP.  The only downfall of this section is that the correction is not actually made to the patent itself. Instead, a certificate of correction is attached to the patent indicating the correction that has been made. I will write more about certificates of correction in a later post. In the meantime, I just wanted you have some information regarding another practice that that I came across this past week.

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