35 U.S.C. 251(d) provides that an application for a reissued patent with broader scope must be filed within two years from the grant of the original patent. An application for a reissued patent with narrower scope than the original patent may be filed at any time.
MPEP 2506 provides that maintenance fees for a reissue patent are due based upon the schedule established for the original utility patent. Currently, only a single maintenance fee is required to be paid in the latest issued reissue patent, which covers all reissued patents based on the same original patent and the original patent itself.
However, effective January 16, 2018, the USPTO will require payment of separate maintenance fees in each reissued patent based on the same original patent. Additionally, if a reissue application is pending, a maintenance fee will be due in the original patent. If the original patent expires during the pendency of a reissue application, prosecution of the reissue application will be terminated because patents may only be reissued for the remaining, unexpired term of the original patent.
For example, assume that a 3 ½-year maintenance fee is due on January 15, 2018 for a family of reissued patents. There are two reissued patents and a pending reissue application, based on the original patent. Because the maintenance fee falls due on or before January 15, 2018, only a single payment is due in the latest reissued patent.
Now, assume instead that the 3 ½-year maintenance fee is due on January 16, 2018. Three payments are required. Each of the reissued patents require a separate payment, as does the original patent because a reissue application is pending on the due date.
Patent owners should be mindful of this rule change when making anticipating and budgeting for maintenance fee payments. Owners of patent families with multiple reissued patents and/or pending reissue applications will see costs multiply, making early payment all the more important to avoid surcharges across entire families.