What happens after you get a patent depends on what kind of patent it is (only utility patents have maintenance fees), what you intend to do with it, whether there are any others who are trying to copy it, and whether there are any others who can show that your patent is not valid. Activities after a patent is granted can include any of these 6 actions:
Patent Maintenance Fees for Utility Patents
Patent maintenance fees are required for all utility patents filed after December 12th, 1980. Maintenance fees are due at 3 and 1/2 years, 7 and 1/2 years, and 11 and 1/2 years. Design and plant patents do not have any patent maintenance fees to be paid. Patent maintenance fees can be paid by the patent applicant or on their behalf by any other person or organization. Along with the fee payment, you must include the patent number and application number. If the utility patent is a reissue, the reissue application number must also be included.
When a patent maintenance fee payment is made online, the fee is based on the current entity status of the patent owner. If there have been any changes in entity status, the change must be completed and processed before an online patent maintenance fee payment is made. However, if you plan to pay by mail or fax, the entity status change request can be submitted along with the patent maintenance fee payment.
When are patent maintenance fees due?
There are three times during the life of a utility patent that patent maintenance fees much be paid or the patent will become abandoned. Maintenance fees are due for utility patents at three years and six months, seven years and six months, and at eleven years and six months from the date of issue. Importantly, the issue date is not the same as the date of application which determines the initial date of protection. Maintenance fees are due at 3 and 1/2 years, 7 and 1/2 years, and 11 and 1/2 years from the date of issue.
The fee amount depends on your business entity status. You can find out more about how entity status affects fees in our entity status article. If the patent owner qualifies as a small entity, the fee is reduced by 60%. If the patent owner qualifies as a small entity, the fee is reduced by 80%.
How much are the patent maintenance fees when due?
The first patent maintenance fee due is after 3.5 years and is $2000. However, small entities pay $800 while micro entities pay only $400. The next patent maintenance fee is due at 7.5 years and goes up to $3760. That makes the small entity fee $1504 and the micro entity fee $752. The final patent maintenance fee due is at 11.5 years and is further increased to $7700; therefore, the small entity fee is $3080 and the micro entity fee is $1540.
If a patent maintenance fee payment late there is a surcharge fee. The surcharge fee for late payment of any patent maintenance fees within six months is $500. At 60%, small entities pay $200, and micro entities pay $100 at 80% off. To request a petition for the delayed payment of the maintenance fee, it is $2100. Small entities have a cost of $840 and micro entities have a cost of $420 for the petition request.
Patent Monitoring for Utility, Design, and Plant Patents
Patent monitoring is the practice of keeping track of patents filed in a special field. Patent monitoring can be done manually by searching patent databases or by using software or a patent monitoring service. Using software is more useful and efficient as it is less time consuming, less likely to have errors occur, and less laborious.
Monitoring issued patents is advisable and can provide many benefits. Staying up to date in multiple different fields allows maximum protection and advantages as a patent owner. One benefit has to do with competitors. By being able to view their competition and/or potential infringers, patent owners can work accordingly. Identifying potential partnerships is another benefit of monitoring patents. A supplier or a customer/client may be the product of monitoring patents. New ideas can even arise from the practice.
There are a few different types of patent monitoring that can be done: technology, competition, market, and legal monitoring. Technology monitoring keeps one up to date as it scans for the latest technology and trends. Competition monitoring scans for potential competitors, infringers, partners, and/or licensing. Market monitoring keeps track of market trends which is advantageous to patent owners looking to maximize the value of their patent. Legal monitoring is the scanning of legal development that could possibly affect one’s patents.
To begin any patent monitoring process, it is important to understand what you wish to track. That way, setting up filters on your search will prove to be most efficient. Searching in the online patent databases is a convenient way to monitor patents. There are four good online patent databases with links in our how to search for prior art article.
To monitor patents through a database, it is necessary to understand how to read a patent application, especially the claims. Because this is a tedious process, it is advisable to hire an experienced patent practitioner to monitor patent databases for you. Patent monitoring is not typically very costly, regardless of it is done internally or externally. Whether the cost is time or money, patent monitoring is useful to stay current on the progress of inventions within a field of work.
Patent Licensing for Utility, Design, and Plant Patents
Licensing a patent is transferring the right to control the making, using, and selling of an invention to another person or business. A patent owner can license a patent instead of manufacturing the product(s) contained therein.
There are three kinds of licenses typically used when licensing patents. The three kinds of patent licenses are: 1) exclusive patent license, 2) sole patent license, and 3) non-exclusive patent license. The kind of license needed will likely depend on the specific patent being licensed as well as the objective to be served in arranging the license. Read more about licensing a patent in on our article about licensing agreement types.
Patent Sales for Utility, Design, and Plant Patents
Selling a patent is transferring the right to control the making, using, and selling of an invention to another person or business. A patent owner can sell a patent instead of manufacturing the product(s) contained therein. When selling a patent is the desired action, determining patent value becomes important. Read more about valuing a patent in our determining patent value article.
Patent Infringement of Utility, Design, and Plant Patents
Patent infringement is the unauthorized use of an invention that is legally protected by an enforceable patent. There are three different kinds of patent infringement: direct, indirect, and literal. No matter the type of infringement occurring with your patent, there are steps to take to ensure you remain protected. To read more on infringement, take a look at our article “What does infringement mean?“
Suspected infringers can be sued in a civil court. It will fall onto the plaintiff to prove 3 things: ownership of the patent, the validity of the patent, and that infringement is occurring. If these elements are proven to be true, the plaintiff may be entitled to compensation for damages occurred.
Compensation may include monetary damages, injunctions, special damages award, or enhanced damages. A USPTO registered patent attorney can guide and represent you through the legal proceedings of an infringement case. Compensation for damages may require that you mark your products with their patent number(s).
Questions about Patent Validity of Utility, Design, and Plant Patents
If a person or business is claiming your patent is not valid, a reexamination may take place. A reexamination completed by the USPTO takes a look at an already issued patent to determine if the claims are valid. For more in depth information on reexaminations, take a look at our article on questioning patent validity.
