# MPEP § 2504: Patents Subject to Maintenance Fees

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2504

## Section

- **Citation:** MPEP § 2504
- **Heading:** Patents Subject to Maintenance Fees
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2500 - Maintenance Fees / MPEP § 2504

## Text

37 CFR 1.362  Time for payment of maintenance fees.
(a) Maintenance fees as set forth in
§§
1.20(e)
through
(g)
are required to be
paid in all patents based on applications filed on or after December 12,
1980, except as noted in paragraph (b) of this section, to maintain a patent
in force beyond 4, 8 and 12 years after the date of grant.
(b) Maintenance fees are not required for any plant patents or
for any design patents.
(c) The application filing dates for purposes of payment of
maintenance fees are as follows:
(1) For an application not claiming benefit of an
earlier application, the actual United States filing date of the
application.
(2) For an application claiming benefit of an earlier
foreign application under
35 U.S.C. 119
,
the United States filing date of the application.
(3) For a continuing (continuation, division,
continuation-in-part) application claiming the benefit of a prior
patent application under
35 U.S.C. 120
,
the actual United States filing date of the continuing
application.
(4) For a reissue application, including a continuing
reissue application claiming the benefit of a reissue application
under
35 U.S.C. 120
,
[the] United States filing date of the original non-reissue
application on which the patent reissued is based.
(5) For an international application which has entered
the United States as a Designated Office under
35 U.S.C.
371
, the international filing date granted
under
Article 11(1)
of the Patent Cooperation Treaty which is considered to be the
United States filing date under
35 U.S.C.
363
.
(d) Maintenance fees may be paid in patents without surcharge
during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for
the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for
the second maintenance fee, and
(3) 11 years through 11 years and 6 months after grant
for the third maintenance fee.
ling date under
35 U.S.C.
363
.
(d) Maintenance fees may be paid in patents without surcharge
during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for
the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant for
the second maintenance fee, and
(3) 11 years through 11 years and 6 months after grant
for the third maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in
§
1.20(h)
during the respective grace periods
after:
(1) 3 years and 6 months and through the day of the 4th
anniversary of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th
anniversary of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the
12th anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without
surcharge set forth in paragraph (d) of this section, or the last day for
paying a maintenance fee with surcharge set forth in paragraph (e) of this
section, falls on a Saturday, Sunday, or a federal holiday within the
District of Columbia, the maintenance fee and any necessary surcharge may be
paid under paragraph (d) or paragraph (e) respectively on the next
succeeding day which is not a Saturday, Sunday, or Federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is
paid within the time periods set forth in paragraphs (d), (e) or (f) of this
section, the patent will expire as of the end of the grace period set forth
in paragraph (e) of this section. A patent which expires for the failure to
pay the maintenance fee will expire at the end of the same date (anniversary
date) the patent was granted in the 4th, 8th, or 12th year after grant.
pplicable surcharge is
paid within the time periods set forth in paragraphs (d), (e) or (f) of this
section, the patent will expire as of the end of the grace period set forth
in paragraph (e) of this section. A patent which expires for the failure to
pay the maintenance fee will expire at the end of the same date (anniversary
date) the patent was granted in the 4th, 8th, or 12th year after grant.
(h) The periods specified in
§§ 1.362(d)
and
37 CFR
1.362(e)
with respect to a reissue application,
including a continuing reissue application thereof, are counted from the
date of grant of the original non-reissue application on which the reissued
patent is based.
Maintenance fees are required to be paid on all patents based on
applications filed on or after December 12, 1980, except for plant patents and design
patents. Furthermore, maintenance fees are required for a reissue patent unless the
patent being reissued did not require maintenance fees. See subsection I below for more
information regarding the payment of maintenance fees in reissue utility patents and
original utility patents for which a reissue application is pending.
Application filing dates for purposes of determining whether a patent is
subject to payment of maintenance fees are as follows:
(A) For an application not claiming benefit of an earlier
application, the actual United States filing date of the application.
(B) For an application claiming benefit of an earlier foreign
application under
35 U.S.C. 119(a)
-
s for which a reissue application is pending.
Application filing dates for purposes of determining whether a patent is
subject to payment of maintenance fees are as follows:
(A) For an application not claiming benefit of an earlier
application, the actual United States filing date of the application.
(B) For an application claiming benefit of an earlier foreign
application under
35 U.S.C. 119(a)
-
(d)
, the actual United States filing date of the
application.
(C) For a continuing (continuation, division, continuation-in-part)
application claiming the benefit of a prior patent application under
35
U.S.C. 120
, the actual United States filing date of the
continuing application.
(D) For a reissue application, including a continuing reissue
application claiming the benefit of a reissue application under
35
U.S.C. 120
, the United States filing date of the original
nonreissue application on which the patent reissued is based.
(E) For an international application that has entered the United
States as a Designated Office under
35 U.S.C. 371
, the
international filing date granted under
Article 11(1)
of the Patent
Cooperation Treaty which is considered to be the United States filing date under
35 U.S.C.
363
.
The term of a utility patent that can be maintained in
force by the payment of maintenance fees may be lengthened by any patent term extension
under
35 U.S.C.
156
or adjustment under
35 U.S.C. 154
, or may be reduced if
there is any disclaimed term. Subject to the payment of maintenance fees and any patent
term extension, adjustment, or disclaimer, the patent term begins on the date the patent
issues and ends 20 years from the date the application was filed, or if the application
claims the benefit of an earlier filed U.S. application or applications (excluding
provisional applications), the patent term ends 20 years from the date the earliest such
application was filed (hereafter, 20 year term)
ent
term extension, adjustment, or disclaimer, the patent term begins on the date the patent
issues and ends 20 years from the date the application was filed, or if the application
claims the benefit of an earlier filed U.S. application or applications (excluding
provisional applications), the patent term ends 20 years from the date the earliest such
application was filed (hereafter, 20 year term). For utility and plant applications
filed prior to June 8, 1995, the patent term is the greater of the 20 year term or 17
years from the patent issue date subject to any disclaimer or term extension.
I.
REISSUE UTILITY PATENTS AND ORIGINAL UTILITY PATENTS FOR WHICH AN
APPLICATION FOR REISSUE IS PENDING
Effective January 16, 2018, each reissue utility
patent requires its own maintenance fee payment during the unexpired part of the
term of the original patent (unless the original patent was filed before December
12, 1980). This practice requires a maintenance fee to be paid in each reissue
patent in force on (i.e., issued before) the maintenance fee due date. This includes
all reissue patents that replace the same original patent (“multiple reissued
patents”) and have maintenance fees due on or after January 16, 2018. This practice
also includes a requirement for maintenance fee payments in original patents that
are not surrendered because one or more reissue applications of the same original
patent are still pending on the maintenance fee due date. In summary, for
maintenance fees due on or after January 16, 2018, a separate payment of the
maintenance fee is required for each reissue patent based on a single original
patent, and for the original patent if there is a pending reissue application based
on the same original patent, to maintain each reissue patent and the original patent
in force beyond the 4th, 8th, or 12th anniversary of the grant date of the original
patent. The due date for a maintenance fee is the last day the maintenance fee may
be paid without a surcharge under
37 CFR 1.362(d)
ngle original
patent, and for the original patent if there is a pending reissue application based
on the same original patent, to maintain each reissue patent and the original patent
in force beyond the 4th, 8th, or 12th anniversary of the grant date of the original
patent. The due date for a maintenance fee is the last day the maintenance fee may
be paid without a surcharge under
37 CFR 1.362(d)
. See
MPEP §
2506
for more information on the times for submitting
maintenance fee payments.
The former practice of requiring only one maintenance
fee in the latest issued reissue patent for all reissue patents based on the same
original patent and for the original patent was discontinued on January 16, 2018.
Accordingly, maintenance fee payments that were due on January 15, 2018 were the
last maintenance fees payable under the former practice.
A.
Maintenance Fee Payments for Multiple Reissued Utility
Patents
Effective January 16, 2018, each reissue patent
of an original utility patent that was issued from an application filed on or
after December 12, 1980 and that is in force on the relevant maintenance fee due
date (i.e., the 3½, 7½, or 11½ year date) requires its own maintenance fee
payment.
In some instances, more than one reissue patent
will be granted to replace a single original patent. “Multiple reissued patents”
that replace a single original patent are provided for in
35 U.S.C.
251(b)
. See
MPEP § 1451
. In these
instances, each of the reissue utility patents requires payment of its own set
of maintenance fees in order to prevent expiration of the reissue patent. The
maintenance fee payment schedule established for the original patent continues
to apply to each reissue patent such that the maintenance fee due dates are
based on the date of the original patent grant. Based on the maintenance fee due
dates, the time periods for paying maintenance fees in reissue utility patents
are set forth in paragraphs (d) and (e) of
37 CFR 1.362
n of the reissue patent. The
maintenance fee payment schedule established for the original patent continues
to apply to each reissue patent such that the maintenance fee due dates are
based on the date of the original patent grant. Based on the maintenance fee due
dates, the time periods for paying maintenance fees in reissue utility patents
are set forth in paragraphs (d) and (e) of
37 CFR 1.362
. See
MPEP §
2506
for more information on the times for submitting
maintenance fee payments. To prevent expiration of any reissue patent, including
each reissue patent based on a single original patent, any maintenance fee with
a due date on or after January 16, 2018 must be paid in each reissue patent in
force on the maintenance fee due date.
B.
Maintenance Fee Payments for Original Utility Patents Not
Surrendered by Reissue
Effective January 16, 2018, the original patent
requires a separate maintenance fee payment if at least one reissue application
based on the original patent is pending on the maintenance fee due date (i.e.,
the 3½, 7½, or 11½ year date) even if a maintenance fee payment is made in
reissue patent(s) that have issued from the same original patent.
35 U.S.C. 251
permits
reissue only for “the unexpired part of the term of the original patent.” An
original patent is not surrendered under
35 U.S.C. 252
until a
reissue application, based on the original patent, issues as a reissue patent
and no other reissue application, based on the same original patent, is still
pending. Because it is the granting of the reissue patent – and not the filing
of the reissue application - that effectuates surrender of the original patent
under
35
U.S.C. 252
, maintenance fees remain due in the original
patent whenever an application for reissue of the original patent is pending on
the maintenance fee due date
er reissue application, based on the same original patent, is still
pending. Because it is the granting of the reissue patent – and not the filing
of the reissue application - that effectuates surrender of the original patent
under
35
U.S.C. 252
, maintenance fees remain due in the original
patent whenever an application for reissue of the original patent is pending on
the maintenance fee due date. Specifically, when one or more reissue patents
have issued and at least one application for reissue of the same original patent
remains pending, the original patent is not surrendered and maintenance fees
remain due in the original patent until the last remaining reissue application
issues as a reissue patent or becomes abandoned. In other words, while there is
an application for reissue pending in a reissue patent family, maintenance fee
payments will be required in
both
the original patent and the
corresponding reissue patent(s).
C.
Example
A total of three applications were filed for
reissue of the same original utility patent, which issued on August 27, 2010.
The reissue applications result in first and second reissue patents granted on
June 18, 2013 and June 25, 2013, respectively. The third reissue application
based on the original patent is scheduled to issue as the third reissue patent
on March 20, 2018 (after the February 27, 2018 due date for the 7½ year
maintenance fee). The 3½ year maintenance fee, which was due on February 27,
2014, was paid in the second reissue patent on December 6, 2013, under the
former practice that required only one set of maintenance fees in the latest
issued reissue patent. The 7½ year maintenance fee due date is Tuesday, February
27, 2018, which is 7½ years after the August 27, 2010 issue date of the original
patent.
The following steps are used to determine which
patents in the patent family (i.e., the original patent and all reissue patents
from the original patent) require payment of the 7½ year maintenance fee:
1. Determine whether the new practice
applies
tent. The 7½ year maintenance fee due date is Tuesday, February
27, 2018, which is 7½ years after the August 27, 2010 issue date of the original
patent.
The following steps are used to determine which
patents in the patent family (i.e., the original patent and all reissue patents
from the original patent) require payment of the 7½ year maintenance fee:
1. Determine whether the new practice
applies. For the new practice of more than one maintenance fee being due
to apply, the reissue patent family based on an original utility patent
will include more than one reissue patent, or at least one reissue
patent and at least one pending application for reissue, of the same
original utility patent and have maintenance fees due on or after
January 16, 2018.
In this example, the patent family has two
reissue patents and a pending reissue application. The 7½ year
maintenance fee due date is February 27, 2018, which is after the
January 16, 2018 effective date of the new practice set forth in this
notice. Therefore, the new practice applies.
2. Determine which of the reissue patents in
the patent family require separate payment of the maintenance fee.
In this example, the first and second
reissue patents were granted in June 2013 and remain in force on January
16, 2018. Therefore, to avoid expiration of the first and second reissue
patents, the 7½ year maintenance fee must be separately paid in both the
first and second reissue patents, regardless of whether the maintenance
fee(s) are paid before, on, or after January 16, 2018. Note that if any
of the required maintenance fee payments are made during the grace
period beginning on February 28, 2018 and ending on August 27, 2018, the
surcharge under
37 CFR 1.20(h)
must
be included with each maintenance fee payment made during the grace
period.
3. Determine whether the original utility patent requires separate payment
of the maintenance fee
e, on, or after January 16, 2018. Note that if any
of the required maintenance fee payments are made during the grace
period beginning on February 28, 2018 and ending on August 27, 2018, the
surcharge under
37 CFR 1.20(h)
must
be included with each maintenance fee payment made during the grace
period.
3. Determine whether the original utility patent requires separate payment
of the maintenance fee.
The maintenance fee must be paid if the
maintenance fee due date is before the date the original patent is
surrendered (i.e., the date the last remaining application for reissue
of the original patent issues as a reissue patent or becomes abandoned).
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, 2018 maintenance fee
due date and is not scheduled to issue as a reissue patent until March
20, 2018. Therefore, the 7½ year maintenance fee must be paid in the
original patent to avoid expiration of the third reissue patent. To
avoid any uncertainty in the record about payment of the maintenance
fee, payment should be made prior to March 20, 2018 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, 2018, payment must still be made in the
original patent because the maintenance fee was due before surrender of
the original patent. In addition, if the 7½ year maintenance fee is paid
during the grace period beginning on February 28, 2018 and ending on
August 27, 2018, the maintenance fee payment must include the surcharge
under
37 CFR 1.20(h)
If the maintenance fee is
paid on or after March 20, 2018, payment must still be made in the
original patent because the maintenance fee was due before surrender of
the original patent. In addition, if the 7½ year maintenance fee is paid
during the grace period beginning on February 28, 2018 and ending on
August 27, 2018, the maintenance fee payment must include the surcharge
under
37 CFR 1.20(h)
.
In the example above, note that the 7½ year
maintenance fee would be the first maintenance fee ever paid in both the
original patent and the first reissue patent because the 3½ year maintenance fee
was paid (four years ago) in only the second reissue patent under the former
practice that required maintenance fee payment in only the latest issued reissue
patent. Also, note that if the original utility patent, which issued on August
27, 2010 in the example, was instead issued on June 15, 2010, the 7½ year
maintenance fee would be due prior to the January 16, 2018 effective date. In
this situation, the 7½ year maintenance fee would only be due in the latest
issued reissue patent under the former practice, even if the 7½ year maintenance
fee and surcharge under
37 CFR 1.20(h)
are paid on
or after the January 16, 2018 effective date during the grace period.
[top]

## Nearby sections

- [MPEP § 2501 Introduction](https://www.frixlaw.com/law-library/statutes/MPEP_S2501.md)
- [MPEP § 2504 Patents Subject to Maintenance Fees](https://www.frixlaw.com/law-library/statutes/MPEP_S2504.md)
- [MPEP § 2505 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2505.md)
- [MPEP § 2506 Times for Submitting Maintenance Fee Payments](https://www.frixlaw.com/law-library/statutes/MPEP_S2506.md)
- [MPEP § 2510 Submission of Maintenance Fee Payments and Documents](https://www.frixlaw.com/law-library/statutes/MPEP_S2510.md)
- [MPEP § 2515 Information Required for Submission of Maintenance Fee Payment](https://www.frixlaw.com/law-library/statutes/MPEP_S2515.md)
- [MPEP § 2520 Maintenance Fee Amounts](https://www.frixlaw.com/law-library/statutes/MPEP_S2520.md)
- [MPEP § 2521 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2521.md)
- [MPEP § 2522 Methods of Payment](https://www.frixlaw.com/law-library/statutes/MPEP_S2522.md)
- [MPEP § 2530 Special Acceptance of Maintenance Fee Payments Containing Informalities](https://www.frixlaw.com/law-library/statutes/MPEP_S2530.md)
- [MPEP § 2531 Payment Late or Insufficient](https://www.frixlaw.com/law-library/statutes/MPEP_S2531.md)
- [MPEP § 2532 Duplicate Payments](https://www.frixlaw.com/law-library/statutes/MPEP_S2532.md)
- [MPEP § 2540 Fee Address for Maintenance Fee Purposes](https://www.frixlaw.com/law-library/statutes/MPEP_S2540.md)
- [MPEP § 2541 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2541.md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2504. Check the current official text before relying on it. Not legal advice.