MPEP 2504
Patents Subject to Maintenance Fees

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2504    Patents Subject to Maintenance Fees [R-08.2017]

37 C.F.R. 1.362 Time for payment of maintenance fees.

  • (a) Maintenance fees as set forth in §§ 1.20(e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
  • (b) Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.
  • (c) The application filing dates for purposes of payment of maintenance fees are as follows:
    • (1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
    • (2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
    • (3) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
    • (4) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, [the] United States filing date of the original non-reissue application on which the patent reissued is based.
    • (5) For an international application which has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.
  • (d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
    • (1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
    • (2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and
    • (3) 11 years through 11 years and 6 months after grant for the third maintenance fee.
  • (e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
    • (1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
    • (2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
    • (3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.
  • (f) If the last day for paying a maintenance fee without surcharge set forth in paragraph (d) of this section, or the last day for paying a maintenance fee with surcharge set forth in paragraph (e) of this section, falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee and any necessary surcharge may be paid under paragraph (d) or paragraph (e) respectively on the next succeeding day which is not a Saturday, Sunday, or Federal holiday.
  • (g) Unless the maintenance fee and any applicable surcharge is paid within the time periods set forth in paragraphs (d), (e) or (f) of this section, the patent will expire as of the end of the grace period set forth in paragraph (e) of this section. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant.
  • (h) The periods specified in §§ 1.362(d) and (e) with respect to a reissue application, including a continuing reissue application thereof, are counted from the date of grant of the original non-reissue application on which the reissued patent is based.

Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents and design patents. Furthermore, maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees. Where there are multiple continuation/divisional reissues of an original utility patent, the maintenance fee must be directed to the latest reissue patent. Only one maintenance fee is required for all the multiple reissue patents that replaced the single original patent. See MPEP § 1415.01.

Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows:

  • (A) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
  • (B) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119(a)-(d), the actual United States filing date of the application.
  • (C) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
  • (D) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, the United States filing date of the original nonreissue application on which the patent reissued is based.
  • (E) For an international application that has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.

The term of a utility patent that can be maintained in force by the payment of maintenance fees may be lengthened by any patent term extension under 35 U.S.C. 156 or adjustment under 35 U.S.C. 154, or may be reduced if there is any disclaimed term. Subject to the payment of maintenance fees and any patent term extension, adjustment, or disclaimer, the patent term begins on the date the patent issues and ends 20 years from the date the application was filed, or if the application claims the benefit of an earlier filed U.S. application or applications (excluding provisional applications), the patent term ends 20 years from the date the earliest such application was filed (hereafter, 20 year term). For utility and plant applications filed prior to June 8, 1995, the patent term is the greater of the 20 year term or 17 years from the patent issue date subject to any disclaimer or term extension.