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bluebug

nonpayment of patent maintenance fees

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I received a letter from my patent attorney congratulating me on the issuance of my patent. He also wrote he would be reminding me of the dates when maintenance patent fees would come due in the future. Long story short he did not remind me to pay them, I was unaware of the fee schedule and the patent lapsed for failure to pay the maintenance fees. Is this attorney liable in any way? Someone else ended up patenting my technology and is now making a small fortune off the product. Or was it ultimately my responsibility as the patent holder to be aware of these fees and make the timely payments? Thanks in advance for any response to my inquiry. ~bluebug

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It is the responsibility of the patentee to ensure that the maintenance fees are paid to prevent expiration of the patent.

Before you consider suing, you might want to check if you can still revive your patent.

If a maintenance fee for a patent is not timely paid, the USPTO allows for time periods to revive patents.

37 CFR 1.378(B) provides that a patent may be reinstated at any time following expiration of the patent for failure to timely pay a maintenance fee if the delay in paying the maintenance fee was unavoidable. This is a very hard standard to meet.

A patent owner may pay a surcharge anytime during the two year period after the 6-month grace period to pay the fee upon a demonstration that the failure to pay the maintenance fee was unintentional. "A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee." (Manual of Patent Examining Procedure Chapter 2500 Section 2590). You will need to act immediately in order to salvage your rights.

More info here.

And please consult a different patent attorney to address the revival.

Naturally, even if you revive the patent, your patent rights will be diminished in some respects and you may still have suffered some monetary damages and you are free to pursue a malpractice claim in federal court (because of exclusive federal jurisidiction on matters relating to patent abandonment and revival) against your attorney.

Good luck!

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