Comments on: Q) Maintenance Fee Paid / Check Returned

By: Bagelman

Bagelman — Fri, 20 Jan 2012 17:02:43 +0000

Got this on 1/18/12/.

By: E

Sat, 19 Nov 2011 15:28:04 +0000

I’m confused about E.

37 CFR 1.378. Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a)The Director may accept the payment of any maintenance
fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unavoidable (paragraph
(b) of this section) or unintentional (paragraph (c) of this section) and if the surcharge required by § 1.20(i) is paid as a condition
of accepting payment of the maintenance fee.

So you can pay the maintenance fee and surcharge after expiration?

By: maggie

maggie — Thu, 20 Oct 2011 00:12:54 +0000

petition [under §1.377] refusal of maintenance fee
1. Must be filed within two months of the action complained
2. Must include the patent number, AND application number, if not both may or may not be entered –> option to Petition director 1.377
3. Petition is NOT appropriate where there is a (1) complete failure to include at least one correct mandatory identifier (2) through error identified the wrong patent number and application number (3) Insufficient payment
4. Petition is ok (appropriate) when either the patent number or the application number is incorrect.

By: jacquiegardner

jacquiegardner — Tue, 03 May 2011 23:12:56 +0000

Got this question today. Pretty sure I got the right answer, C.

By: Overworkked

Overworkked — Thu, 28 Apr 2011 18:42:47 +0000

I had this question on 4/27/2011 with very sparse facts that added extra facts in the answer:

QUESTION:

Patentee Z had maintenance payment due. Sent check. PTO did not credit Z’s patent.

Which does or does not comply with the MPEP, laws, regulations, etc.?

A. something
B. something else
C. Any petition filed under this section 1.377 must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest. (Important to know if TRUE)
D. something else
E. Must pay Maintenance Fee before expiration but can pay surcharge later (False, must pay both up front per ??).

MPEP on Maint.Fees was important
so was CFR 1.377

By: Interen

Interen — Thu, 31 Mar 2011 23:31:38 +0000

I don’t think 37 CFR 1.5a applies to maintenance fee submission, since it concerns a application instead of a patent. On the contrary, CFR 1.5b specifies to follow 1.366c for maintenance fee payment. So no 2-weeks clause here.

By: patenttips

patenttips — Thu, 17 Mar 2011 20:08:52 +0000

Complete failure, basically you sent a blank check to PTO, means you’re SOL.

If you mess up something, but you tried, and payment was returned, then you can petition within 2 months.

My only question is do you still need to petition if you reply to returned check within two weeks (See original comments that give a 2 week period for reply). Hence replies from returned check 0 – 2 weeks are ok, 2 weeks – 2 months require petition. If you wrote the blank check or >2 months then you lost your patent.

By: PHOSITA

PHOSITA — Thu, 10 Mar 2011 19:45:53 +0000

John Doe seems correct per MPEP 2580 :
“A petition under 37 CFR 1.377 would not be appropriate where there is a complete failure to include at least one correct mandatory identifier as required by 37 CFR 1.366(c) for the patent since no evidence would be present as to the patent on which the maintenance fee was intended to be paid.”

By: ELS

ELS — Mon, 07 Mar 2011 17:21:41 +0000

Had this question yesterday.

By: Rodney

Rodney — Tue, 25 Jan 2011 22:26:00 +0000

I got the same question as Anne today on my exam