Information Required for Submission of Maintenance Fee Payment

37 CFR 1.366  Submission of maintenance fees.

(a) The patentee may pay maintenance fees and any necessary

surcharges, or any person or organization may pay maintenance fees and any

necessary surcharges on behalf of a patentee. A maintenance fee transmittal

letter may be signed by a juristic applicant or patent owner. A patentee

need not file authorization to enable any person or organization to pay

maintenance fees and any necessary surcharges on behalf of the patentee.

(b) A maintenance fee and any necessary surcharge submitted for

a patent must be submitted in the amount due on the date the maintenance fee

and any necessary surcharge are paid. A maintenance fee or surcharge may be

paid in the manner set forth in

§ 1.23

or by an

authorization to charge a deposit account established pursuant to

§

1.25

. Payment of a maintenance fee and any necessary

surcharge or the authorization to charge a deposit account must be submitted

within the periods set forth in

§ 1.362(d), (e), or

(f)

. Any payment or authorization of maintenance fees and

surcharges filed at any other time will not be accepted and will not serve

as a payment of the maintenance fee except insofar as a delayed payment of

the maintenance fee is accepted by the Director in an expired patent

pursuant to a petition filed under

§ 1.378

. Any

authorization to charge a deposit account must authorize the immediate

charging of the maintenance fee and any necessary  surcharge to the deposit

account. Payment of less than the required amount, payment in a manner other

than that set forth in

§ 1.23

, or in the

filing of an authorization to charge a deposit account having insufficient

funds will not constitute payment of a maintenance fee or surcharge on a

patent. The procedures set forth in

§ 1.8

or

§

1.10

may be utilized in paying maintenance fees and

any necessary surcharges.

deposit

account. Payment of less than the required amount, payment in a manner other

than that set forth in

§ 1.23

, or in the

filing of an authorization to charge a deposit account having insufficient

funds will not constitute payment of a maintenance fee or surcharge on a

patent. The procedures set forth in

§ 1.8

or

§

1.10

may be utilized in paying maintenance fees and

any necessary surcharges.

(c) In submitting maintenance fees and any necessary surcharges,

identification of the patents for which maintenance fees are being paid must

include the patent number, and the application number of the United States

application for the patent on which the maintenance fee is being paid. If

the payment includes identification of only the patent number

(

i.e.

, does not identify the application number of

the United States application for the patent on which the maintenance fee is

being paid), the Office may apply the payment to the patent identified by

patent number in the payment or may return the payment.

(d) Payment of maintenance fees and any surcharges should

identify the fee being paid for each patent as to whether it is the 3 1/2-,

7 1/2-, or 11 1/2-year fee, whether small entity status is being changed or

claimed, the amount of the maintenance fee and any surcharge being paid, and

any assigned customer number. If the maintenance fee and any necessary

surcharge is being paid on a reissue patent, the payment must identify the

reissue patent by reissue patent number and reissue application number as

required by paragraph (c) of this section and should also include the

original patent number.

hanged or

claimed, the amount of the maintenance fee and any surcharge being paid, and

any assigned customer number. If the maintenance fee and any necessary

surcharge is being paid on a reissue patent, the payment must identify the

reissue patent by reissue patent number and reissue application number as

required by paragraph (c) of this section and should also include the

original patent number.

(e) Maintenance fee payments and surcharge payments relating

thereto must be submitted separate from any other payments for fees or

charges, whether submitted in the manner set forth in

§ 1.23

or by an authorization to charge a deposit

account. If maintenance fee and surcharge payments for more than one patent

are submitted together, they should be submitted on as few sheets as

possible with the patent numbers listed in increasing patent number order.

If the payment submitted is insufficient to cover the maintenance fees and

surcharges for all the listed patents, the payment will be applied in the

order the patents are listed, beginning at the top of the listing.

(f) Notification of any change in status resulting in loss of

entitlement to small entity status must be filed in a patent prior to

paying, or at the time of paying, the earliest maintenance fee due after the

date on which status as a small entity is no longer appropriate. See

§

1.27(g)

.

(g) Maintenance fees and surcharges relating thereto will not be

refunded except in accordance with

§§ 1.26

and

1.28(a)

.

37 CFR

1.366

establishes the guidelines and procedures for submission of

maintenance fees, including any necessary surcharges. The patentee may pay maintenance

fees and any necessary surcharges or any person or organization may pay maintenance fees

and any necessary surcharges on behalf of the patentee without filing in the Office

evidence of authorization by the patentee to pay maintenance fees

.

37 CFR

1.366

establishes the guidelines and procedures for submission of

maintenance fees, including any necessary surcharges. The patentee may pay maintenance

fees and any necessary surcharges or any person or organization may pay maintenance fees

and any necessary surcharges on behalf of the patentee without filing in the Office

evidence of authorization by the patentee to pay maintenance fees. This will enable

patentees to pay the maintenance fees and any necessary surcharges themselves or

authorize some person or organization to pay maintenance fees and any necessary

surcharges on their behalf. No verification of the authority to pay maintenance fees and

any necessary surcharges in a particular patent will be made by the Office. While anyone

may pay the maintenance fees and any necessary surcharges on a patent, if the payment is

accepted by the Office, any Office notices relating to maintenance fees and any

necessary surcharges will be mailed to the “fee address” set forth in

37 CFR 1.363

. If

the payment is not accepted by the Office, it will be returned to the person who

submitted the payment if a return address is available. It is strongly recommended that

the payor should include a return address along with his or her telephone number since

the Office may contact the payor in some instances when it is unclear to which patent

the fees are to be applied. See

MPEP § 2530

.

A maintenance fee and any necessary surcharge for a patent must be

submitted in the amount due on the date the maintenance fee and any necessary surcharge

are paid, and at the proper time, i.e., within the periods set forth in

37 CFR

1.362

. If the amount of the maintenance fee is correct on the

date it is paid and credited to the patent, a later change in the maintenance fees to

reflect a new fee amount will not require a modification in the amount paid.

37 CFR

1.366(c)

provides that a maintenance fee payment must include the

patent number and the application number on which the maintenance fee is being paid

t forth in

37 CFR

1.362

. If the amount of the maintenance fee is correct on the

date it is paid and credited to the patent, a later change in the maintenance fees to

reflect a new fee amount will not require a modification in the amount paid.

37 CFR

1.366(c)

provides that a maintenance fee payment must include the

patent number and the application number on which the maintenance fee is being paid. If

the payment includes identification of only the patent number (i.e., does not identify

the application number for the patent on which the maintenance fee is being paid), the

Office may apply the payment to the patent identified by patent number in the payment or

may return the payment. See

MPEP § 2530

. The application number

required to be submitted is not that of a prior parent application, but rather the

application number of the actual application that matured into the patent for which

maintenance fees are to be paid. If the maintenance fee and any necessary surcharge is

being paid on a reissue patent, the application number required is that of the reissue

application.

If a patent expires because the maintenance fee and any necessary

surcharge have not been paid in the manner required by

37 CFR 1.366

, the

patentee could proceed under

37 CFR 1.378

(see

MPEP §

2590

), if appropriate, or could file a petition under

37 CFR

1.377

(see

MPEP § 2580

) within the period set

therein seeking to have the maintenance fee accepted as timely even though not all of

the required identifying data was present prior to expiration of the grace period.

Under

37 CFR 1.366(d)

, the following information should also be

submitted for each patent on which a maintenance fee or surcharge is paid

(

37 CFR

1.366(d))

:

(A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee);

(B) the amount of the maintenance fee and any surcharge being

submitted;

(C) any assigned customer number; and

(D) whether entity status is being changed or claimed with the

payment

Under

37 CFR 1.366(d)

, the following information should also be

submitted for each patent on which a maintenance fee or surcharge is paid

(

37 CFR

1.366(d))

:

(A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee);

(B) the amount of the maintenance fee and any surcharge being

submitted;

(C) any assigned customer number; and

(D) whether entity status is being changed or claimed with the

payment.

Where the payment is a maintenance fee and any necessary surcharge on a

reissue patent, in addition to the information requested for all payments, it is

requested that the original patent number be furnished. Although the submission of the

information requested under

37 CFR 1.366(d)

is not mandatory,

it would expedite the processing of maintenance fee payments.

The Maintenance Fee Transmittal Form, PTO/SB/45 should be used when

submitting maintenance fees by mail or by facsimile transmission. This form is

available, upon request, from the Maintenance Fee Branch. It is also available from the

USPTO website (

www.uspto.gov/patent/patents-forms#patent

).

The Office processes fees in the order in which they are presented. If

the payment submitted is insufficient to cover the maintenance fees and surcharges for

all patents listed, and there is no general authorization to charge a deposit account,

the payment will be applied in the order the patents are listed, beginning at the top of

the listing.

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