(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
(b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:
(1) The required maintenance fee set forth in § 1.20(e) through (g);
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(c) Any petition under this section must be signed in compliance with § 1.33(b).
(d) Reconsideration of a decision refusing to accept a delayed maintenance fee may be obtained by filing a petition for reconsideration within two months of the decision, or such other time as set in the decision refusing to accept the delayed payment of the maintenance fee.
(e) If the delayed payment of the maintenance fee is not accepted, the maintenance fee will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed.
[78 FR 62407, Oct. 21, 2013]
Notes of Decisions
Network Signatures, Inc. v. State Farm Mut. Auto. Ins., 731 F.3d 1239 (Fed. Cir. 2013).
· cites it 12× “STATE FARM MUTUAL AUTO petition with the PTO for delayed payment of the mainte- nance fee in accordance with 37 C.F.R. §1.378 (a). The petition was on the PTO’s standard form, which was pre- populated with the statement that “[t]he delay in pay- ment of the maintenance fee to…”
Burandt v. Dudas, 528 F.3d 1329 (Fed. Cir. 2008).
· cites it 5× “On October 13, 2005, Burandt, through his attorney George Macdonald, filed a petition in the PTO under 37 C.F.R. § 1.378 (b) for acceptance of a delayed maintenance fee payment, asserting that the failure to pay the maintenance fee was unavoidable.”
Ralph D. Ray v. Bruce Lehman, Comm'r of Patents & Trademarks, 55 F.3d 606 (Fed. Cir. 1995).
· cites it 3× “Soon thereafter he attempted pro se to have the patent reinstated by filing a paper entitled “Petition to Accept Delayed Payment of Maintenance Fee in an Expired Patent 37 CFR 1.378” (the petition) in the PTO. In the petition, Ray asserted that he had “no knowledge whatsoever…”
Burandt v. Dudas, 496 F. Supp. 2d 643 (E.D. Va. 2007).
· cites it 4× “§ 41 (c) and its own regulation, 37 C.F.R. § 1.378 (b)(3)(2006) as follows: [A]n adequate showing that the delay in payment of the maintenance fee at issue was “unavoidable” within the meaning of 35 U.”
Target Training Int'l, Ltd. v. Lee, 1 F. Supp. 3d 927 (N.D. Iowa 2014).
“In Burandt , the Federal Circuit Court of Appeals considered an appeal of a grant of summary judgment for the PTO on judicial review of the PTO’s denial of Bu-randt’s request for a waiver, pursuant to Rule 183, of a requirement under 37 C.F.R. § 1.378 (b) to show unavoidable…”
Centigram Commc'ns Corp. v. Lehman, 862 F. Supp. 113 (E.D. Va. 1994).
· cites it 7× “The sole question presented in this case is whether the Commissioner of Patents and Trademarks (the “Commissioner”) exceeded his lawful authority and acted contrary to law in promulgáting 37 C.F.R. § 1.378 (c). The Commissioner promulgated this Patent and Trademark Office…”
R.R. Donnelley & Sons Co. v. Dickinson, 123 F. Supp. 2d 456 (N.D. Ill. 2000).
· cites it 5× “” Other than blindly leaving the maintenance fees for the ’031 patent to Webb (even after Webb was purchased by a different company), plaintiff has not established that any steps were taken to ensure timely payment pursuant to 37 C.F.R. § 1.378 (b)(3). Likewise, the court agrees…”
Taylor v. United States Pat. & Trademark Off., 339 F. App'x 995 (Fed. Cir. 2009).
· cites it 3× “Taylor that he was not precluded from seeking reinstatement of the patent under the unavoidability standard of 37 C.F.R. § 1.378 (b). On January 18, 2006, Mr.”
Ulead Sys., Inc. v. Lex Comput. & Mgmt. Corp., 351 F.3d 1139 (Fed. Cir. 2003).
· cites it 2× “2001) (“A maintenance fee improperly paid as a small entity where small entity status has been established but is no longer appropriate will be treated as a matter under 37 CFR § 1.”
Korsinsky v. Dudas, 227 F. App'x 891 (Fed. Cir. 2007).
“§ 41 ; 37 C.F.R. § 1.378 (b). Moreover, we see no error in the ruling of the district court that Mr.”
— 37 C.F.R. § 1.378(b) — 3 cases
R.R. Donnelley & Sons Co. v. Dickinson, 123 F. Supp. 2d 456 (N.D. Ill. 2000).
“” Other than blindly leaving the maintenance fees for the ’031 patent to Webb (even after Webb was purchased by a different company), plaintiff has not established that any steps were taken to ensure timely payment pursuant to 37 C.F.R. § 1.378 (b)(3). Likewise, the court agrees…”
— 37 C.F.R. § 1.378(b)(3) — 1 case
R.R. Donnelley & Sons Co. v. Dickinson, 123 F. Supp. 2d 456 (N.D. Ill. 2000).
“” Other than blindly leaving the maintenance fees for the ’031 patent to Webb (even after Webb was purchased by a different company), plaintiff has not established that any steps were taken to ensure timely payment pursuant to 37 C.F.R. § 1.378 (b)(3). Likewise, the court agrees…”
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