1415.01 Maintenance Fees on the Original Patent [R-10.2019]

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):

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 original 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.

See MPEP Chapter 2500 for additional information pertaining to maintenance fees.

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. See 37 CFR 1.362(h).

If the maintenance fee is due prior to the issuance of a reissue patent, the maintenance fee must be paid in the original patent to maintain (1) the reissue patent in force beyond the end of the applicable grace period defined in 37 CFR 1.362(c) and (2) the pendency of any applications for reissue of the original patent. If the reissue application that is scheduled to issue is the only or last pending reissue application, payment should be made in the original patent at least a day prior to the issue date of the reissue application to avoid any uncertainty in the record about payment of the maintenance fee. This is because when that reissue application issues as a reissue patent, the original patent is surrendered and ceases to exist. If the maintenance fee is not paid before the issue date of the reissue application, payment of the maintenance fee during the grace period must be made to avoid expiration of the reissue patent. Payment of the maintenance fee should be made in the original patent because the maintenance fee was due before surrender of the original patent. In addition, the maintenance fee payment must include the surcharge under 37 CFR 1.20(h) if the maintenance fee is paid during the grace period (excluding any later payment authorized by 37 CFR 1.362(f)).

A.Maintenance Fees Due Prior to January 16, 2018

If the original patent that was reissued requires maintenance fees, the schedule of payments of maintenance fees on the original patent will continue for the reissue patent. See 37 CFR 1.362(h). Maintenance fees due after the issuance of the reissue patent must be paid in the reissue patent to maintain the reissue patent in force.

If there was more than one reissue patent granted that replaced a single original patent, a single maintenance fee is required for all reissue patents. 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. The issuance of more than one reissue patent does not alter the schedule of payments of maintenance fees on the original patent.

B.Maintenance Fee Due On or After January 16, 2018

The practice of requiring only a single maintenance fee for multiple reissued patents was discontinued for maintenance fees due on or after January 16, 2018 in accordance with the USPTO’s fee setting authority. See Setting and Adjusting Patent Fees during Fiscal Year 2017, 82 FR 52780 (November 14, 2017). Maintenance fees with a due date on January 13, 14, or 15 of 2018 could have been paid on Tuesday, January 16, 2018 in accordance with 37 CFR 1.362(f). The procedures that allow payment on January 16, 2018 do not change the maintenance fee due dates from being prior to January 16, 2018.

1. Single Reissue Patent and No Pending Application for Reissue

Once an original patent reissues and there is no pending application for reissue of the original patent, maintenance fees due after the issuance of the reissue patent must be paid in the reissue patent to maintain the reissue patent in force. If more than one reissue patent replaced the original patent, maintenance fees must be paid in each of the reissue patents. Maintenance fees are no longer due in the original patent because it has been surrendered. However, if there is at least one pending application for reissue of the original patent, maintenance fees are still due in the original patent even if one or more reissue patents have issued. See paragraph 3 below for additional information.

2. More Than One Reissue Patent and No Pending Application for Reissue

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 divisional 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. Effective January 16, 2018, separate maintenance fee payments are required for each utility reissue patent during the unexpired part of the term of the original patent (unless the original patent was filed before December 12, 1980). Therefore, maintenance fee payments are required in each of the reissue patents that replace the single original patent.

See MPEP § 2504, subsection I, for additional information on maintenance fees for reissue patents.

3. One or More Reissue Patent(s) and One or More Pending Application(s) for Reissue

Maintenance fee payments are required in original patents that are not surrendered because one or more reissue applications of the same original patent are still pending on the maintenance fee due date. Accordingly, each maintenance fee that comes due in a reissue patent family on or after January 16, 2018 must be separately paid in each reissue patent, and must also be paid in the original patent if the original patent is not surrendered on the maintenance fee due date.

See MPEP § 2504, subsection I, for additional information on maintenance fees for reissue patents and original patents for which a reissue application is pending.