| Fees and Payment of Money |
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(144) New Opt-In Pilot Program for Receipt of Maintenance Fee Reminder and
Expiration Notices by Email
Effective Date: Effective upon publication of this notice
The United States Patent and Trademark Office (USPTO) is offering a
pilot program for email delivery of applicable Maintenance Fee Reminders or
Notices of Patent Expiration when maintenance fees are past due. Only
patents with an email address associated with the customer number used to
establish the fee address under 37 CFR 1.363 are eligible for inclusion in
this pilot. Patents lacking a fee address cannot be included. The
37 CFR 1.363 fee address is often referred to as the "fee address for
maintenance fee purposes" (see Manual of Patent Examining Procedure section
2540). Notices under the pilot program will be delivered exclusively as an
attachment(s) to an email sent to the fee address customer number email
address. Notices sent by email will be identical to notices currently sent
by postal mail.
For utility patents, maintenance fees are due on the dates 3.5, 7.5, and
11.5 years after the patent issue date. Patentees may pay each of the three
maintenance fees, without additional surcharge, during the six months
preceding their due dates. Patentees may also pay maintenance fees, with a
surcharge, during the six months following their due dates. The USPTO sends
a Maintenance Fee Reminder if maintenance fees are not paid within the
first six months of the payment window. The USPTO sends a Notice of Patent
Expiration if patentees do not pay maintenance fees and applicable
surcharges by the end of the fourth, eighth, or 12th years after the patent
issue date. Until now, the USPTO has delivered Maintenance Fee Reminders
and Notices of Patent Expiration solely by postal mail to the fee address
on record, or in the absence of an established fee address, to the
correspondence address on record. The pilot program does not affect the
existing practice of mailing notices to correspondence addresses on record
in the absence of established fee addresses.
Patentees may establish a fee address only by using a customer number.
The email pilot program requires participants to opt in to receive notices
by email, and to have at least one email address associated with the
customer number used to establish the fee address. In cases where more than
one email address is associated with a participant's fee address, the USPTO
will send notices to all associated email addresses. The USPTO provides a
"Fee Address" Indication Form, which is available online, for establishing
a fee address in a patent(s) or an application(s) prior to patenting. For
patents issued from a utility patent application filed before September 16,
2012, patentees should use the "Fee Address" Indication Form with form
number SB/47, available at
https://www.uspto.gov/sites/default/files/documents/sb0047.pdf. For patents
issued from a utility patent application filed on or after September 16,
2012, patentees should use the "Fee Address" Indication Form with form
number AIA/47, available at
https://www.uspto.gov/sites/default/files/documents/aia0047.pdf.
To participate and opt-in during the pilot program, participants must
send an email request to RADHelpdesk@uspto.gov with the subject line "MF
Notices Email Pilot Program" and include their name, S-signature, telephone
number, and valid customer number. (Note: S-signatures are provided for in
37 CFR 1.4(d)(2) and is a permitted type of signature between forward slash
marks that is not handwritten; for example: /John Doe/.) The USPTO will
treat the email as a request to opt in to the pilot program for all patents
with a fee address established by the specified customer number. A person
identified as the fee addressee must send the email request. If the fee
addressee is a juristic entity (e.g., organization), an appropriate
official of the fee addressee must email the request and include the
juristic entity name (e.g., patent annuity company name), the official's
business title, and self-certification that the official is empowered to
elect participation in the pilot. After receiving the email request, the
 Top of Notices (144) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 386 |
USPTO will reply and, if appropriate, confirm participation in the pilot
program and send subsequent notices by email (no longer by postal mail).
The USPTO may inquire with the juristic entity listed as the fee addressee
to confirm that the requesting officer has authority to make the election.
The USPTO will maintain the pilot program for at least six months from
its effective date and may terminate, revise, or otherwise take appropriate
action after evaluating its effectiveness.
Under existing statutes and regulations, the USPTO has no duty to notify
patentees when maintenance fees are due. It is the responsibility of the
patentee to ensure maintenance fees are paid to prevent patent expiration.
Although the USPTO will provide some notices as reminders that maintenance
fees are due, the notices, errors in the notices or in their delivery, or
the lack of or tardiness of notices will in no way relieve a patentee from
the responsibility of making timely payment of maintenance fees to prevent
the patent from expiring by operation of law, regardless of whether the
notice is delivered by postal mail or email. Notices provided by the USPTO
are courtesies and intended to assist patentees. The USPTO's provision of
notices in no way shifts the burden of monitoring patent maintenance fee
timelines from the patentee to the USPTO.
Learn more about maintenance fees at
www.uspto.gov/PatentMaintenanceFees.
Please direct any comments or inquiries regarding this pilot program
notice to Matthew Lee by email at matthew.lee@uspto.gov.
[1510 OG 491]