2590 Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent [R-01.2024]

37 CFR 1.378(a) provides that the Director of the Office may accept the payment of any maintenance fee due on a patent based on an expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director of the Office to have been unintentional. See subsection I below for explanation. The appropriate petition fee set forth in 37 CFR 1.17(m) must be paid as a condition of accepting payment of the maintenance fee. If multiple maintenance fees due on a single patent have not been paid, a separate petition fee is required for each delayed maintenance fee payment. A statement that the delay in payment of the maintenance fee was unintentional is also required with respect to each delayed maintenance fee payment (a delay of more than two years after the date of nonpayment of a maintenance fee requires additional information of the facts and circumstances surrounding the entire delay to support a conclusion that the entire delay was indeed ‘‘unintentional.’’). See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020). While the patentee can include the statements of unintentional delay in a single petition (if desired), a separate petition fee is required for each delayed maintenance fee payment. If the Director of the Office accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired but will be subject to the intervening rights and provisions of 35 U.S.C. 41(c)(2).

Any petition under 37 CFR 1.378(b) should be marked on the front page of the communication to the attention of the Office of Petitions and addressed as follows:

Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

For applications filed on or after September 16, 2012, 37 CFR 1.33(b) requires that amendments and other papers be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant (37 CFR 1.42). 37 CFR 1.33(b) further provides that, unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.33(b) requires that amendments and other papers be signed by: (1) A patent practitioner of record appointed in compliance with pre-AIA 37 CFR 1.32(b); (2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; (3) An assignee as provided for under pre-AIA 37 CFR 3.71(b) of this chapter; or (4) All of the applicants (pre-AIA 37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with pre-AIA 37 CFR 3.71 of this chapter. Pursuant to 37 CFR 1.31 as revised effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner and therefore, unless otherwise specified, all papers submitted on behalf of a juristic entity on or after September 16, 2012 must be signed by a patent practitioner.

37 CFR 1.378(d) provides a mechanism for obtaining reconsideration of a decision refusing to accept a maintenance fee upon petition filed pursuant to paragraph (a). This mechanism is a petition for reconsideration which may be filed within 2 months of, or such other time as set in, the decision refusing to accept the delayed payment of the maintenance fee. The decision on the petition for reconsideration, may provide that no further reconsideration or review of the matter will be undertaken by the Director of the Office. The maintenance fee submitted will be refunded if the delayed payment of the maintenance fee is not accepted. The refund will be made following the decision on the petition for reconsideration if the decision provides that no further reconsideration or review of the matter will be undertaken, or, upon request, after the expiration of the time for filing a petition for reconsideration, if none is filed.

I. UNINTENTIONAL DELAY

Under 35 U.S.C. 41(c)(1), the Director of the Office may accept late payment of any maintenance fee filed after the 6-month grace period, if the delay in payment is shown to the satisfaction of the Director of the Office to have been unintentional. See MPEP § 711.03(c) for a general discussion of the “unintentional” delay standard.

In addition to the timeliness deadline set forth in the preceding paragraph, a petition filed under the unintentional standard of 37 CFR 1.378(b) must include:

• (A) the required maintenance fee set forth in 37 CFR 1.20(e) through (g);
• (B) the petition fee set forth in 37 CFR 1.17(m); and
• (C) a statement that the delay in payment of the maintenance fee was unintentional.

A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee. See Rembrandt Technologies LP v. Comcast of Fla./Pa., LP, 899 F.3d 1254, 1273, 127 USPQ2d 1826, 1838 (Fed. Cir. 2018). For example, a statement that the delay in payment of the maintenance fee was unintentional would not be proper when the patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the patent under 37 CFR 1.378. While the Office reserves the right to request additional information whenever there is a question as to whether the delay is unintentional, a person filing a petition seeking reinstatement of an expired patent more than two years after the date of expiration for nonpayment of a maintenance fee is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See also MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.

When a petition to accept unintentionally delayed payment of a maintenance fee in an expired patent is filed no more than two years from the date the patent expired, the petition may be automatically processed and immediately decided using the web-based ePetition process via the UPSTO patent electronic filing system. If the ePetition process is not available or desired, petitioner should use PTO/SB/66 form found on the USPTO forms website at www.uspto.gov/PatentForms to file a petition to accept unintentionally delayed payment of a maintenance fee in an expired patent. The petition will be processed by the Office of Petitions.

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