When properly managed, your company’s patent portfolio can be one of your company’s most valuable IP assets.
Maintaining a patent portfolio includes management of both state and federal fees. If a patent holder allows their patent fees to lapse, it may lead to losing the patent. Therefore, effective patent management includes maintaining fees.
In the following article, we take a closer look at patent maintenance fees, fee schedules, and patent portfolio management services.
Patent Maintenance Fees
To hold a patent, an inventor must file a patent application with the USPTO, or the United States Patent and Trademark Office. Patent maintenance fees follow patent maintenance fee schedules. These fees must be paid according to a schedule set by the federal government.
In this case, the term “fee schedule” does not pertain to dates of the year. A patent fee schedule is a government-set table for reference by which the USPTO makes decisions regarding how much a given patent will cost.
You may visit the USPTO website for the most up-to-date information about the USPTO fee schedule.
USPTO patent maintenance fees will vary from patent to patent and from organization to organization. There are a few consistent numbers that a business owner should know to help manage their patent portfolio.
Design Patent Maintenance Fees and Utility Patents
Patent maintenance fees will vary depending on a variety of factors, but there are some basic numbers to know.
If your business qualifies as a large entity company, a patent application costs $760, whereas a smaller entity application is $380, and a micro-entity, such as a sole-proprietorship, would spend $190.
Design patents cost less than utility patents. It’s important to figure out which kind of patent application you need.
Utility patents cover the processes for the manufacture and operation of a product. On the other hand, design patents protect aesthetic designs.
The cost of design patent maintenance fees will vary depending on several factors related to design and invention. There are other costs involved in filing a design patent, such as the costs of patent designs or a qualified patent law consultation.
Utility patents can constitute a significantly higher expense to file and maintain. Because utility patents protect a process or an operation, for instance, one part of a machine or production process, they require a lot of documentation to prove ownership of them. However, this is worthwhile as utility patents can be a valuable asset to a patent portfolio.
A robust patent portfolio will likely include both kinds of patents. Selecting, filing, and managing the patents in your patent portfolio could increase the portfolio’s value if effectively managed. In the long run, it is essential to properly manage a patent portfolio. To turn your patent portfolio into a profitable asset in your business, you will need to have all fees and associated applications up to date and fully accurate.
Patent Maintenance Fees Schedule
To maintain the patents in a patent portfolio, it is important to know when patent maintenance fees are due. Missing the deadlines and due dates pertinent to your patent maintenance fee schedule will usually result in your patent lapsing.
Fees for patent maintenance are due several times during the effective length of your patent. Those deadlines are as follows:
Three and a half years after the patent was granted
Then seven and a half years after
Then eleven and a half years after
It is possible to pay maintenance fees up to six months in advance of due dates.
A patent owner has a grace period of six months if they miss their maintenance fee deadline, although the USPTO may require a conditional surcharge before allowing that six-month grace period.
If a patent owner misses their patent filing deadlines and then fails to pay maintenance fees related to patent renewal, it is possible to revive the patent. Certain parameters must be met and proved by the patent owner, along with submitting the correct forms and applications.
It is never a good idea to fail to pay patent maintenance fees.
This will result in patent ownership lapsing, and a given patent will no longer be a profitable asset in a patent portfolio.
In general, it is more difficult to revive a patent after a patent lapse when deliberately neglecting to pay maintenance fees. If a patent owner unintentionally allows a patent to lapse, and they can prove the lapse was accidental, it is far easier to revive a lapsed patent.
Patent Portfolio Management Services
Outsourcing patent portfolio management can be a great investment for a business with many patents.
At UnitedLex, we provide actionable intelligence to help our clients identify adjacent markets and previously obscure licensing opportunities. Many businesses invest in patent development, but sometimes they miss the earning potential of the IP asset portfolio.
Digital IP solutions enable patent owners to create, monetize, and exploit patent portfolios. Companies that transform their IP practices with data-driven insights, deep legal expertise, domain knowledge, and integrated technology realize an increase in ROI on IP assets, increased revenue opportunities, reduced costs, and accelerated outcomes.
Patent fees are an important part of the patent renewal process, and it is essential to pay any fees on time and in accordance with the schedule.
At UnitedLex, we utilize cutting-edge technologies and experts in patent portfolio management to turn portfolios into highly profitable areas of your business. Visit our intellectual property management page for a more thorough breakdown of the services we offer.
With more than 3,000 legal, engineering, and technology professionals globally, UnitedLex enables legal organizations to thrive in the Digital Age. Over the past 15 years, we have successfully delivered eDiscovery, Source Code and Document Review, IP Monetization, and Contract Management Improvement services to over 25% of the Global 500, 30% of the Fortune 50, and 50% of the Am Law 100.
Contact UnitedLex to learn more about transforming your Intellectual Property function and our broader programs for Digital Legal Transformation. Read more about creating a patent monetization strategy here.
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