Maintenance fees are due at three points following patent issuance: 3 ½ years; 7 ½ years; and 11 ½ years, and the current fees are $1,130, $2,850, and $4,730 respectively (with 50% discounts for small-entities). An additional six months can be obtained to pay the maintenance fee (with a late-penalty surcharge). The fees increase over time so that technology that is kept as a monopoly for longer periods incurs greater costs. This is a disincentive to keep technology out of the public domain if you are not commercializing it.
How should you decide whether to pay the maintenance fees or not for patents in your company’s portfolio? Patents must earn their keep. You should evaluate each patent as its maintenance fees come due to determine if it is still a good use of company resources to keep the patent in force. Some questions to ask yourself include:
- Is this technology valuable as a defensive measure?
- Is it a deterrent to block competitors?
- Does it create a patent thicket or portfolio?
- Does it generate licensing revenue?
- Does it signal our power in the industry to others?
Patent maintenance fees are often missed when an outside service is not used. It requires careful monitoring of databases and a back-up redundancy tracking system, but these tasks are rarely at the top of most executive or in-house counsel’s to-do list. Inadvertent mistakes and missed payments can be detrimental, and this is one task that may best be outsourced if you do not have a dedicated and trained in-house resource at hand.