MPEP § 2504 — MPEP § 2504
Current through: 2022-07-01

2504-Patents Subject to Maintenance Fees 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2500 

 Section 2504 
 

 
 
 
 
 
 2504 Patents Subject to Maintenance Fees [R-01.2024]

 
 37 CFR 1.362 Time for payment of maintenance fees. 

 
 (a) Maintenance fees as set forth in §§
 1.20(e) through (g) are required to be
 paid in all patents based on applications filed on or after December 12,
 1980, except as noted in paragraph (b) of this section, to maintain a patent
 in force beyond 4, 8 and 12 years after the date of grant.
 

 (b) Maintenance fees are not required for any plant patents or
 for any design patents. 
 

 (c) The application filing dates for purposes of payment of
 maintenance fees are as follows:
 
 (1) For an application not claiming benefit of an
 earlier application, the actual United States filing date of the
 application.
 

 (2) For an application claiming benefit of an earlier
 foreign application under 35 U.S.C. 119 ,
 the United States filing date of the application.
 

 (3) For a continuing (continuation, division,
 continuation-in-part) application claiming the benefit of a prior
 patent application under 35 U.S.C. 120 ,
 the actual United States filing date of the continuing
 application.
 

 (4) For a reissue application, including a continuing
 reissue application claiming the benefit of a reissue application
 under 35 U.S.C. 120 ,
 [the] United States filing date of the original non-reissue
 application on which the patent reissued is based.
 

 (5) For an international application which has entered
 the United States as a Designated Office under 35 U.S.C.
 371 , the international filing date granted
 under Article 11(1) 
 of the Patent Cooperation Treaty which is considered to be the
 United States filing date under 35 U.S.C.
 363 .
 

 
 

 (d) Maintenance fees may be paid in patents without surcharge
 during the periods extending respectively from:
 
 (1) 3 years through 3 years and 6 months after grant for
 the first maintenance fee,
 

 (2) 7 years through 7 years and 6 months after grant for
 the second maintenance fee, and
 

 (3) 11 years through 11 years and 6 months after grant
 for the third maintenance fee.
 

 
 

 (e) Maintenance fees may be paid with the surcharge set forth in
 §
 1.20(h) during the respective grace periods
 after:
 
 (1) 3 years and 6 months and through the day of the 4th
 anniversary of the grant for the first maintenance fee.
 

 (2) 7 years and 6 months and through the day of the 8th
 anniversary of the grant for the second maintenance fee, and
 

 (3) 11 years and 6 months and through the day of the
 12th anniversary of the grant for the third maintenance fee.
 

 
 

 (f) If the last day for paying a maintenance fee without
 surcharge set forth in paragraph (d) of this section, or the last day for
 paying a maintenance fee with surcharge set forth in paragraph (e) of this
 section, falls on a Saturday, Sunday, or a federal holiday within the
 District of Columbia, the maintenance fee and any necessary surcharge may be
 paid under paragraph (d) or paragraph (e) respectively on the next
 succeeding day which is not a Saturday, Sunday, or Federal holiday.
 

 (g) Unless the maintenance fee and any applicable surcharge is
 paid within the time periods set forth in paragraphs (d), (e) or (f) of this
 section, the patent will expire as of the end of the grace period set forth
 in paragraph (e) of this section. A patent which expires for the failure to
 pay the maintenance fee will expire at the end of the same date (anniversary
 date) the patent was granted in the 4th, 8th, or 12th year after grant.
 

 (h) The periods specified in §§ 1.362(d) and
 37 CFR
 1.362(e) with respect to a reissue application,
 including a continuing reissue application thereof, are counted from the
 date of grant of the original non-reissue application on which the reissued
 patent is based.
 

 
 

 Maintenance fees are required to be paid on all patents based on
 applications filed on or after December 12, 1980, except for plant patents and design
 patents. Furthermore, maintenance fees are required for a reissue patent unless the
 patent being reissued did not require maintenance fees. See subsection I below for more
 information regarding the payment of maintenance fees in reissue utility patents and
 original utility patents for which a reissue application is pending.
 

 Application filing dates for purposes of determining whether a patent is
 subject to payment of maintenance fees are as follows:
 

 
 (A) For an application not claiming benefit of an earlier
 application, the actual United States filing date of the application.
 

 (B) For an application claiming benefit of an earlier foreign
 application under 35 U.S.C. 119(a) -
 (d) , the actual United States filing date of the
 application.
 

 (C) For a continuing (continuation, division, continuation-in-part)
 application claiming the benefit of a prior patent application under
 35
 U.S.C. 120 , the actual United States filing date of the
 continuing application.
 

 (D) For a reissue application, including a continuing reissue
 application claiming the benefit of a reissue application under
 35
 U.S.C. 120 , the United States filing date of the original
 nonreissue application on which the patent reissued is based.
 

 (E) For an international application that has entered the United
 States as a Designated Office under 35 U.S.C. 371 , the
 international filing date granted under Article 11(1) of the Patent
 Cooperation Treaty which is considered to be the United States filing date under
 35 U.S.C.
 363 .
 

 
 The term of a utility patent that can be maintained in
 force by the payment of maintenance fees may be lengthened by any patent term extension
 under 35 U.S.C.
 156 or adjustment under 35 U.S.C. 154 , or may be reduced if
 there is any disclaimed term. Subject to the payment of maintenance fees and any patent
 term extension, adjustment, or disclaimer, the patent term begins on the date the patent
 issues and ends 20 years from the date the application was filed, or if the application
 claims the benefit of an earlier filed U.S. application or applications (excluding
 provisional applications), the patent term ends 20 years from the date the earliest such
 application was filed (hereafter, 20 year term). For utility and plant applications
 filed prior to June 8, 1995, the patent term is the greater of the 20 year term or 17
 years from the patent issue date subject to any disclaimer or term extension. 
 

 I. REISSUE UTILITY PATENTS AND ORIGINAL UTILITY PATENTS FOR WHICH AN
 APPLICATION FOR REISSUE IS PENDING Effective January 16, 2018, each reissue utility
 patent requires its own maintenance fee payment during the unexpired part of the
 term of the original patent (unless the original patent was filed before December
 12, 1980). This practice requires a maintenance fee to be paid in each reissue
 patent in force on (i.e., issued before) the maintenance fee due date. This includes
 all reissue patents that replace the same original patent (“multiple reissued
 patents”) and have maintenance fees due on or after January 16, 2018. This practice
 also includes a requirement for maintenance fee payments 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. In summary, for
 maintenance fees due on or after January 16, 2018, a separate payment of the
 maintenance fee is required for each reissue patent based on a single original
 patent, and for the original patent if there is a pending reissue application based
 on the same original patent, to maintain each reissue patent and the original patent
 in force beyond the 4th, 8th, or 12th anniversary of the grant date of the original
 patent. The due date for a maintenance fee is the last day the maintenance fee may
 be paid without a surcharge under 37 CFR 1.362(d) . See
 MPEP §
 2506 for more information on the times for submitting
 maintenance fee payments.
 

 The former practice of requiring only one maintenance
 fee in the latest issued reissue patent for all reissue patents based on the same
 original patent and for the original patent was discontinued on January 16, 2018.
 Accordingly, maintenance fee payments that were due on January 15, 2018 were the
 last maintenance fees payable under the former practice.
 

 A. Maintenance Fee Payments for Multiple Reissued Utility
 Patents Effective January 16, 2018, each reissue patent
 of an original utility patent that was issued from an application filed on or
 after December 12, 1980 and that is in force on the relevant maintenance fee due
 date (i.e., the 3½, 7½, or 11½ year date) requires its own maintenance fee
 payment.
 

 In some instances, more than one reissue patent
 will be granted to replace a single original patent. “Multiple reissued patents”
 that replace a single original patent are provided for in 35 U.S.C.
 251(b) . See MPEP § 1451 . In these
 instances, each of the reissue utility patents requires payment of its own set
 of maintenance fees in order to prevent expiration of the reissue patent. The
 maintenance fee payment schedule established for the original patent continues
 to apply to each reissue patent such that the maintenance fee due dates are
 based on the date of the original patent grant. Based on the maintenance fee due
 dates, the time periods for paying maintenance fees in reissue utility patents
 are set forth in paragraphs (d) and (e) of 37 CFR 1.362 . See
 MPEP §
 2506 for more information on the times for submitting
 maintenance fee payments. To prevent expiration of any reissue patent, including
 each reissue patent based on a single original patent, any maintenance fee with
 a due date on or after January 16, 2018 must be paid in each reissue patent in
 force on the maintenance fee due date.
 

 B. Maintenance Fee Payments for Original Utility Patents Not
 Surrendered by Reissue Effective January 16, 2018, the original patent
 requires a separate maintenance fee payment if at least one reissue application
 based on the original patent is pending on the maintenance fee due date (i.e.,
 the 3½, 7½, or 11½ year date) even if a maintenance fee payment is made in
 reissue patent(s) that have issued from the same original patent.
 

 35 U.S.C. 251 permits
 reissue only for “the unexpired part of the term of the original patent.” An
 original patent is not surrendered under 35 U.S.C. 252 until a
 reissue application, based on the original patent, issues as a reissue patent
 and no other reissue application, based on the same original patent, is still
 pending. Because it is the granting of the reissue patent – and not the filing
 of the reissue application - that effectuates surrender of the original patent
 under 35
 U.S.C. 252 , maintenance fees remain due in the original
 patent whenever an application for reissue of the original patent is pending on
 the maintenance fee due date. Specifically, when one or more reissue patents
 have issued and at least one application for reissue of the same original patent
 remains pending, the original patent is not surrendered and maintenance fees
 remain due in the original patent until the last remaining reissue application
 issues as a reissue patent or becomes abandoned. In other words, while there is
 an application for reissue pending in a reissue patent family, maintenance fee
 payments will be required in both the original patent and the
 corresponding reissue patent(s).
 

 C. Example A total of three applications were filed for
 reissue of the same original utility patent, which issued on August 27, 2010.
 The reissue applications result in first and second reissue patents granted on
 June 18, 2013 and June 25, 2013, respectively. The third reissue application
 based on the original patent is scheduled to issue as the third reissue patent
 on March 20, 2018 (after the February 27, 2018 due date for the 7½ year
 maintenance fee). The 3½ year maintenance fee, which was due on February 27,
 2014, was paid in the second reissue patent on December 6, 2013, under the
 former practice that required only one set of maintenance fees in the latest
 issued reissue patent. The 7½ year maintenance fee due date is Tuesday, February
 27, 2018, which is 7½ years after the August 27, 2010 issue date of the original
 patent.
 

 The following steps are used to determine which
 patents in the patent family (i.e., the original patent and all reissue patents
 from the original patent) require payment of the 7½ year maintenance fee:
 

 
 1. Determine whether the new practice
 applies. For the new practice of more than one maintenance fee being due
 to apply, the reissue patent family based on an original utility patent
 will include more than one reissue patent, or at least one reissue
 patent and at least one pending application for reissue, of the same
 original utility patent and have maintenance fees due on or after
 January 16, 2018.
 
 

 

 In this example, the patent family has two
 reissue patents and a pending reissue application. The 7½ year
 maintenance fee due date is February 27, 2018, which is after the
 January 16, 2018 effective date of the new practice set forth in this
 notice. Therefore, the new practice applies.
 

 

 2. Determine which of the reissue patents in
 the patent family require separate payment of the maintenance fee.
 
 

 

 In this example, the first and second
 reissue patents were granted in June 2013 and remain in force on January
 16, 2018. Therefore, to avoid expiration of the first and second reissue
 patents, the 7½ year maintenance fee must be separately paid in both the
 first and second reissue patents, regardless of whether the maintenance
 fee(s) are paid before, on, or after January 16, 2018. Note that if any
 of the required maintenance fee payments are made during the grace
 period beginning on February 28, 2018 and ending on August 27, 2018, the
 surcharge under 37 CFR 1.20(h) must
 be included with each maintenance fee payment made during the grace
 period.
 

 

 3. Determine whether the original utility patent requires separate payment
 of the maintenance fee. 
 
 

 

 The maintenance fee must be paid if the
 maintenance fee due date is before the date the original patent is
 surrendered (i.e., the date the last remaining application for reissue
 of the original patent issues as a reissue patent or becomes abandoned).
 Any time an application for reissue of the original patent is still
 pending on the maintenance fee due date, the maintenance fee must be
 paid in the original patent.
 

 
 

 

 In this example, the third reissue
 application is still pending on the February 27, 2018 maintenance fee
 due date and is not scheduled to issue as a reissue patent until March
 20, 2018. Therefore, the 7½ year maintenance fee must be paid in the
 original patent to avoid expiration of the third reissue patent. To
 avoid any uncertainty in the record about payment of the maintenance
 fee, payment should be made prior to March 20, 2018 because when the
 third reissue application issues as a reissue patent, the original
 patent is surrendered and ceases to exist. If the maintenance fee is
 paid on or after March 20, 2018, payment must still be made in the
 original patent because the maintenance fee was due before surrender of
 the original patent. In addition, if the 7½ year maintenance fee is paid
 during the grace period beginning on February 28, 2018 and ending on
 August 27, 2018, the maintenance fee payment must include the surcharge
 under 37 CFR 1.20(h) .
 

 

 
 In the example above, note that the 7½ year
 maintenance fee would be the first maintenance fee ever paid in both the
 original patent and the first reissue patent because the 3½ year maintenance fee
 was paid (four years ago) in only the second reissue patent under the former
 practice that required maintenance fee payment in only the latest issued reissue
 patent. Also, note that if the original utility patent, which issued on August
 27, 2010 in the example, was instead issued on June 15, 2010, the 7½ year
 maintenance fee would be due prior to the January 16, 2018 effective date. In
 this situation, the 7½ year maintenance fee would only be due in the latest
 issued reissue patent under the former practice, even if the 7½ year maintenance
 fee and surcharge under 37 CFR 1.20(h) are paid on
 or after the January 16, 2018 effective date during the grace period. 
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2501-Introduction 

 2502-2503-[Reserved] 

 2504-Patents Subject to Maintenance Fees 

 2505-[Reserved] 

 2506-Times for Submitting Maintenance Fee Payments 

 2507-2509-[Reserved] 

 2510-Submission of Maintenance Fee Payments and Documents 

 2511-2514-[Reserved] 

 2515-Information Required for Submission of Maintenance Fee Payment 

 2516-2519-[Reserved] 

 2520-Maintenance Fee Amounts 

 2521-[Reserved] 

 2522-Methods of Payment 

 2523-2529-[Reserved] 

 2530-Special Acceptance of Maintenance Fee Payments Containing Informalities 

 2531-Payment Late or Insufficient 

 2532-Duplicate Payments 

 2533-2539-[Reserved] 

 2540-Fee Address for Maintenance Fee Purposes 

 2541-[Reserved] 

 2542-Change of Correspondence Address 

 2543-2549-[Reserved] 

 2550-Entity Status Discounts 

 2551-2559-[Reserved] 

 2560-Revocation of Power of Attorney and Withdrawal of Attorney 

 2561-2569-[Reserved] 

 2570-Maintenance Fee Payment Status Requests 

 2571-2574-[Reserved] 

 2575-Notices 

 2576-2579-[Reserved] 

 2580-Review of Decision Refusing to Accept and Record Payment of a Maintenance Fee Filed Prior to Expiration of Patent 

 2581-2589-[Reserved] 

 2590-Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent 

 2591-Intervening Rights in Reinstated Patents 

 2592-2594-[Reserved] 

 2595-Forms 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:46