Background of Maintenance Fees and Petitions


The Patent Office started out in the late 1700's with the lofty goal "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." The idea was to encourage creativity and inventiveness and thus fuel the progress of science and technology. The patent system was intended to provide a level playing field for big companies and individual inventors to reap the rewards of their creativeness and investment of time and money by granting the inventor a 17-year monopoly on the use of his invention. Along the way, these ideals have been subrogated by the zeal of the U.S. government to collect taxes anywhere they can. Prior to 1980, obtaining a patent was pretty straight forward. A Filing Fee was charged when the papers were first sent to the Patent Office. The claims of the idea were examined for several years. Then the patent was granted and an Issue Fee was charged. Together, these two fees amounted to a hundred or so dollars, depending on the number of claims. Once granted, the inventor was given protection for a period of 17 years from others who might infringe the invention. And that was it!

Fee Schedule Before 1980
Fee Schedule before 1980

In 1980, it dawned on Congress that taxing inventors to keep their patents active would be a great source of revenue. And so the system of Maintenance Fees was born. (The Patent Office now takes in over a billion dollars a year.) Here's how it works: The patent papers are sent to the Patent Office along with a Filing Fee. The patent expires twenty years from this date of filing. The claims of the idea are examined for several years. Then the patent is granted and an Issue Fee is charged. Together, these two fees amount to somewhere between $1000 - $2000. But that's not the end of it. At the end of 4-, 8-, and 12-years after issue, Maintenance Fees must be paid or the patent expires and enters the public domain. These add an additional $3,000 to $6,000 to the cost. Congress provided a schedule of overdue fines if you paid late (that range from $65 to $1,640) to revive the patent.

Fee Schedule After 1980
Fee Schedule after 1980

However, the overdue fine had to be accompanied by an explanation of why the fees were overdue. The statement was to be judged against an almost impossible standard. It is referred to as the Unavoidable Standard in that one must fully document why the fee was not paid on time. The Unadvoidable Standard assumes that the payment of the Maintenance Fees takes absolute precedence over all other obligations - even paying for a life-saving operation.

There is debate in legal circles that the Unavoidable Standard is not what Congress intended, but rather one that the Patent Office has implemented through arbitrary and irresponsible practice. A very enlightening Commentary about this can be found in The Journal of Law and Technology.

The fees cannot be paid ahead of time! Congress thought they were doing the individual inventor a favor. Their thinking was that if the invention was not profitable, the inventor would be spared the later fees. I guess they meant well but, unfortunately, the concept has hurt the small inventor, rather than helped. The Fees are paid late for a multitude of reasons: other needs (like mortgage payments or medical operations) take precedence, medical or mental problems of the inventor cause him/her to miss the date, employees responsible for paying the fees screw-up, the calendar of payment dates is destroyed by fire or earthquake, etc. The reason that shows up the most is that the inventor was not reminded by his attorney that the fee was due. Typical reasons are that the attorney developed medical (alcoholism) or mental (Alzheimer's Disease) problems or was disbarred causing his practice to lapse. In other cases, the lawyer simply retired or died. And often the inventor would move, and thinking that the patent, once granted was good until it naturally expired, would not keep his attorney informed of his whereabouts.

Inventors most often became aware of their patent's having expired when they attempted to sell them to others. And when they tried to rectify the situation by paying the overdue fine, they found that they could not meet the Unavoidable Standard. Consequently, hundreds upon hundreds of patents have expired because inventors, once aware of problem, have sought to pay the money due, but could not meet the Unavoidable Standard.

In your case, you sent in the late Maintenance Fee and Overdue Fine along with a Petition Form PTO/SB/65 which had a two-sentence instruction on what documentation was to be provided to get the patent reinstated. The Patent Office then came back with a Decision and a list of "additional requirements." View Samples of Additional Requirements.

And even though you may have supplied the "additional requirements," the Patent Office ruled that it wasn't sufficient and you lost your valuable patent.

The content and processing of Form PTO/SB/65 violated a number of laws and was the basis for my lawsuit. I want you and your lawyer to have the benefit of the knowledge and evidence that I amassed. As long as you don't hold me personally liable, you are welcome to use any of the exhibits on this website.

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