In this example, the patent family has two reissue patents and a pending reissue application. Therefore, the new practice applies. In this example, the first and second reissue patents were granted in June and remain in force on January 16, Note that if any of the required maintenance fee payments are made during the grace period beginning on February 28, and ending on August 27, , the surcharge under 37 CFR 1. The maintenance fee must be paid if the maintenance fee due date is before the date the original patent is surrendered i.
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, maintenance fee due date and is not scheduled to issue as a reissue patent until March 20, To avoid any uncertainty in the record about payment of the maintenance fee, payment should be made prior to March 20, 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, , payment must still be made in the original patent because the maintenance fee was due before surrender of the original patent. To ensure that all patentees have a six-month period to pay maintenance fees without a surcharge, the Office is establishing procedures for patentees to request a refund of the surcharge under 37 CFR 1.
In other words, the new practice did not alter the requirement to pay the maintenance fees within the 37 CFR 1. For these patents, any request for refund should not be made and will not be favorably considered if made. That means that once an applicant files a patent application, before receiving an issued patent, a USPTO examiner reviews the application and determines if it passes the tests for patentability: Is the invention new, novel, non-obvious, sufficiently described and enabled?
This examination understandably takes some time, and therefore the USPTO has quite a backlog of pending applications waiting to be examined.
Once an examiner reviews an application, they will issue a first office action. This will typically fall into one of two categories, a rejection or an allowance. The USPTO provides a running tracker of the amount of time you are waiting to receive a decision for both design patents and utility patents.
The first-action pendency is the average number of months from the application filing date to the date a first office action is mailed by the USPTO. The total pendency is the average number of months from the filing date for a design to the date the application has reached final disposition e. The numbers speak for themselves:. One important additional consideration is that many utility patents will at some point require something called a Request for Continued Examination RCE.
An RCE is essentially refiling the application after having hit some sort of roadblock during prosecution, typically in the form of a final rejection. When factoring in the additional time taken by RCEs, the total average pendency for all utility patents jumps up to As you can see, by the most conservative metric, design patents see a first office action about 20 percent faster than utility patents.
And in my experience, it is not uncommon to receive a first action for design patents within a year from filing. Another important factor to consider are post-filing fees. These include, for example, attorneys fees for responding to an office action and issuance or maintenance fees. According to USPTO statistics, design patents have an objectively higher allowance rate than utility patents.
The filing of a reissue application does not alter the schedule of payments of maintenance fees on the original patent. If maintenance fees have not been paid on the original patent as required by 35 U. See In re Morgan, F. The examiner should determine whether all required maintenance fees have been paid before conducting an examination of a reissue application. In addition, prior to issuing any Office action and during the process of preparing the reissue application for issue, the examiner should again determine whether all maintenance fees required to date have been paid.
The history of maintenance fees is determined by the following, all of which should be used to provide a check on the search made :. Pursuant to 37 CFR 1. Design and plant patents do not require the payment of maintenance fees. See 37 CFR 1. While the US does not have patent renewals, a US utility patent does have has a series of payment deadlines in order to keep the granted patent alive. These payments for issued utility patents are called patent maintenance fees. Design patents do not have maintenance fees, but simply expire at the end of their year term from the date of grant.
Maintenance fee deadlines are counted from the grant date of the utility patent. There are three maintenance fee deadlines:. If a maintenance fee deadline has passed, a late maintenance fee can still be paid within the 6-month grace period after the deadline. You can look up patent maintenance fee details here.
0コメント