Once a patent is issued, it must be “maintained.” A maintenance fee or renewal fee is a fee that is paid to maintain a granted patent in force. Failure to timely pay the fee can cause the patent to expire prematurely, meaning that the rights provided by a patent are no longer enforceable. The time period for paying a maintenance fee can vary depending on the jurisdiction of the patent. In the United States, three maintenance fees for a utility patent must be paid during the course of the patent’s life. The first maintenance fee is due between the 3 and 3 1/2 year anniversary after the date of issuance, the second is due between the 7 to 7 1/2 year anniversary after the date of issuance, and the last is due between the 11 and 11 1/2 year anniversary of the date of issue. There is also a grace period of 6 months following each maintenance fee period, but an additional fee charged by the USPTO will be incurred. All of these dates must be carefully recorded and communicated to our clients as they come up.
As opposed to patents, which have a finite lifespan, trademarks can theoretically have an infinite lifespan. However, trademark registrations have specific time frames in which the registration must be renewed. Failure to renew a registration on a timely basis can cause the registration to lapse. In countries where common law trademark rights are not recognized, the expiration of a trademark registration can be detrimental to a brand holder.
The life span of a trademark registration can depend on the jurisdiction of the registration. In the United States, a trademark registration is valid for 10 years from the date of registration. However, it is imperative to note that between the fifth and the sixth year after registration, the registrant must file a declaration of continued use to keep the registration alive. Failure to file the declaration of use between the fifth and sixth anniversaries of the registration will cause the registration to lapse.
At Gottlieb, Rackman & Reisman, we have a deep understanding of the intricacies involved in maintaining patent and trademark portfolios and actively monitor these important dates, while keeping in mind our client’s needs and objectives. We actively monitor these dates for our clients while utilizing our sophisticated docketing system to maintain comprehensive patent and trademark protection. We can assist in maintaining both domestic and international patent and trademark portfolios.