The filing of a reissue application does not alter the schedule of payments of maintenance fees on the original patent. If maintenance fees have not been paid on the original patent as required by 35 U.S.C. 41(b) and 37 CFR 1.20, and the patent has expired, no reissue patent can be granted. 35 U.S.C. 251, only authorizes the granting of a reissue patent for the unexpired term of the original patent. Once a patent has expired, the Director of the USPTO no longer has the authority under 35 U.S.C. 251 to reissue the patent. See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993).
The examiner should determine whether all required maintenance fees have been paid before conducting an examination of a reissue application. In addition, prior to issuing any Office action and during the process of preparing the reissue application for issue, the examiner should again determine whether all maintenance fees required to date have been paid.
The history of maintenance fees is determined by the following, all of which should be used (to provide a check on the search made):
- (A) Go to the USPTO intranet and select the PALM screen, then the “General Information” screen, type in the patent number and then select the “Fees” screen.
- (B) Go to the USPTO intranet and then the “Revenue Accounting and Management” screen, then the “Fee History” screen. Then type in the patent number.
- (C) Go to the USPTO Internet Site at www.uspto.gov/patents-application-process/ checking-application-status/check-filing-status- your-patent-application, select Public PAIR, type in the patent number and select the “Fees” screen.
If the window for the maintenance fee due has closed (maintenance fees are due by the day of the 4th, 8th and 12th year anniversary of the grant of the patent), but the maintenance fee has not been paid, the Office of Patent Legal Administration (OPLA) should be contacted by the Technology Center (TC) Special Program Examiner (SPRE), appropriate Quality Assurance Specialist (TQAS), or Supervisory Patent Reexamination Specialist (SPRS) for instructions as to what appropriate action to take.
I. PAYMENT OF MAINTENANCE FEES WHERE THE PATENT HAS BEEN REISSUED
Pursuant to 37 CFR 1.362(b), maintenance fees are not required for a reissue patent if the original patent that was reissued did not require maintenance fees. Design and plant patents do not require the payment of maintenance fees. See 37 CFR 1.362(b).
Where the original patent that was reissued did require maintenance fees, the schedule of payments of maintenance fees on the original patent will continue for the reissue patent. 37 CFR 1.362(h). Once an original patent reissues, maintenance fees are no longer due in the original patent, but rather the maintenance fees are due in the reissue patent. This is because upon the issuance of the reissue patent, the original patent is surrendered and ceases to exist.
In some instances, more than one reissue patent will be granted to replace a single original patent. The issuance of more than one reissue patent does not alter the schedule of payments of maintenance fees on the original patent. The existence of multiple reissue patents for one original patent can arise where multiple divisional reissue applications are filed for the same patent, and the multiple applications issue as reissue patents (all to replace the same original patent). In addition, a divisional application or continuation application of an existing reissue application may be filed, and both may then issue as reissue patents. A single maintenance fee is required for all reissue patents that replace the single original patent. The maintenance fee must be directed to the latest reissue patent that has issued, i.e., the reissue patent with the highest reissue patent number.
See MPEP Chapter 2500 for additional information pertaining to maintenance fees.