Patent & trademark annuity fees

It is easy to lose patents and trademarks by forgetting to pay their annuity (maintenance) fees. Set up your automatic reminder systems today.

You have just received your US utility patent or trademark, congratulations!  But remember that unless you pay annuity fees (maintenance fees), your patent or trademark will expire early.  No, you can’t pay these fees all at once. You must pay the fees during various future time windows. You must wait until the time window opens to pay.

Why did the government set it up this way?

Why do we have this strange system?  IP (Intellectual Property) laws are a compromise between public and private rights.  The underlying idea is that if the IP is important to you, then you will keep track of the payment windows.  If it is not important to you (and you forget to pay), then the public rights part of the policy kicks in. So if you forget, the laws automatically transfer the IP rights back to the public! Every certain number of years, the system forces you to assert that you still want the IP. 

Utility patents often have about a 17-20 year term (your mileage may vary), with maintenance fees due during specific time windows at 3-4, 7-8, and 11-12 years after issue. There is no requirement that patents have to be used to keep them in effect.  So during these time windows, the USPTO will just ask you to affirm that you are authorized to pay and take your money.

Trademarks have to be renewed during specific time windows at 5-6 and then every 9-10 years (forever) after issue.  Unlike patents, trademarks are a “use it or lose it” type of IP.  The USPTO, in addition to charging fees, also requires you to provide proof of actual use in commerce. The USPTO will deny renewal if your evidence is absent or unconvincing.

The responsibility for paying these annuity fees ultimately rests with you, the IP owner.  Although some law firms may occasionally send out courtesy reminder notices, you should not rely on these.

Set up an automatic reminder system

Instead, consider setting up your automatic reminder system.  At a minimum, enter the dates into at least one (preferably two) long-term electronic calendars.  Alternatively, you can use other types of automatic reminders (docketing) systems. Remember to keep these systems going.

Alternatively, or additionally, you should consider engaging a professional annuity service. Several such annuity services exist. Without making any particular recommendations, some of these annuity services include Computer Patent Annuities Global, Computer Packages Inc., Dennemeyer & Company, and Maxval.