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Maintenance Fees
For applications filed before June 8, 1995, a utility patent has a term expiring 17 years from its issue date, or 20 years from it's filing date, whichever is longer. For applications filed after June 7, 1995, the patent term expires 20 years after the original utility patent application filing date. The patent term is not renewable, but may be extended in some instances. The term for a utility patent must be maintained through the payment of maintenance fees.
All utility patents issued from applications filed on or after December 12, 1981 are subject to the payment of maintenance fees which must be paid to maintain patent status. These fees are due at 3 1/2 (three and one-half), 7 1/2 (seven and one-half) and 11 1/2 (eleven and one-half) years from the date of issuance of the patent. This fee can be paid without a surcharge during the "window period", the six (6) month period preceding the due date (i.e. 3 years to 3 years and 6 months). Failure to pay the current maintenance fee on time may result in the expiration of the patent. A six (6) month grace period is provided when when the maintenance fee may be paid with a surcharge. The grace period is the six month period immediately following the due date of the maintenance fee. The Patent and trademark Office does not always mail notices to patent owners that maintenance fees are due. It is common practice that owners of patents rely on their patent attorney to keep track of the maintenance fee due dates. Patents relating to some pharmaceutical inventions may be extended by the Commissioner for up to five years to compensate for delays due to Federal pre-marketing regulatory procedures. Patent relating to all other types of inventions can only be extended be enactment of special Federal legislation.
Foreign Patent Protection
In order to protect an invention in a foreign country, the inventor must file a patent application in the respective country. If the inventor does not, anyone in the particular foreign country will be able to use, make and or sell the invention in that country without payment to the inventor. In most instances, however, they could not bring the invention into the United States without infringing upon the U.S. Patent rights. The U.S. is a member of the Paris Convention which entitles U.S. applicants who file corresponding applications in any other country (within one year of their U.S. patent application) the right to claim the filing date of their U.S. patent application for the purposes of overcoming prior art references.
The U.S. is also a member of the Patent Cooperation treaty (PCT) which enables U.S. applicants to file a single international patent application (PCT application). The PCT application must be filed within one year of the filing date of the U.S. patent application. The applicant must then file separate patent applications in each PCT country within twenty months of the U.S. filing date or within eight months of the filing date of the PCT application. The applicant has the option of filing a "Demand" document within nineteen months of the U.S. filing date which gives the applicant thirty months after the U.S. filing date to file separate applications in the foreign countries. When filing separate applications in foreign countries, it is important to know that the patent laws in foreign countries are different. Most countries, therefore, require that applicants acquire foreign patent counsel licensed to practice in the respective country. Also, non-English speaking countries require the patent application to be translated into their respective language. |
