Patent It Yourself - PDF Archive

418 | Patent it YOURSELF
Definitely not worth it, unless you like your ego stroked for
a price.
A sixth recent scam comes in the form of an email to
a patentee. The email states that it comes from a Japanese
industrialist who is seeking to buy patents that cover
inventions he can manufacture. A client traced back the
email and found that the sender was a grifter based in
Nigeria.
As a patentee, you may receive other offers along the
lines of the foregoing. Be sure to investigate and think about
it carefully (or ask a trusted advisor) before you follow up
on any offer.
Beware of Published Application Scams
Recently I filed a PCT application for a client and the
PTO published it in due course. Shortly afterward the
client received an official-looking “bill” in the mail from
an official-sounding organization in Florida, listing the
details of his PCT application and asking for $1,629.30 for
“Charges For Registration.” This is a scam. I complained
about this to the Florida Attorney General and found
that they were already investigating this organization
for other scams. You may get a similar “bill” if your
regular patent application is published, so beware. Ask
an attorney or your own state’s attorney general if you
receive any similar “bill” that’s not from a source with
which you’re familiar.
H. Maintenance Fees
In 1983, a law was passed under which the PTO instituted
a maintenance fee (MF) system. While MFs are new to the
U.S., their use had been commonplace in most countries
for decades. Under the U.S. MF system, your patent, when
granted, will subsist in force for 20 years from the filing date
of its application, provided three maintenance fees are paid.
If you don’t pay any MFs, your patent will expire four
years from grant. If you pay a first MF between years 3.0
and 3.5 from grant, the PTO will extend the patent to
expire eight years from grant. If you pay a second (much
higher) MF between years 7.0 and 7.5, the PTO will extend
the patent to expire 12 years from grant. And if you pay a
third and final (much higher yet) MF between years 11.0
and 11.5, the PTO will extend the patent to expire 20 years
(plus any extension the PTO has granted), from filing.
This information is presented in Fig. 15B, an MF timing
chart. The adjustable arrow indicates that the expiration
date varies, depending upon the length of pendency of the
application. The online calculator in Section F above will
calculate your maintenance fees for you.
To help you remember when to pay your MFs, I’ve
provided an MF Reminder Sheet as Form 15-3; a sample
is completed in Fig. 15C. You should copy this sheet and
fill it out in ink—except write the year of MF I (three years
after issue) in pencil on the top line and leave the last three
columns in the table blank. Put the sheet at the end of your
current year’s calendar. Keep moving it ahead to the end of
each new year’s calendar at the end of each year, until the
third year after issue when the fee is due. Write that the MF
is due on the appropriate date on your calendar for the third
Fig. 15B—Maintenance Fee Timing Chart