What happens if a maintenance fee is paid during the grace period?
What happens if a maintenance fee is paid during the grace period? If a maintenance fee is paid during the 6-month grace period following the due date, it will be subject to a surcharge. According to MPEP 2506: “A maintenance fee may be paid without surcharge at any time during the 6-month period preceding each…
Read MoreWhat happens if a maintenance fee payment is late or insufficient?
If a maintenance fee payment is late or insufficient, the USPTO will send a notice (e.g., a Notice of Non-Acceptance of Patent Maintenance Fee (PTO-2142)) to the fee submitter. The patent owner must reply to this notice before the grace period expires to avoid patent expiration. According to MPEP 2531: “If the Office considers a…
Read MoreHow does the AIA treat an inventor’s own prior use compared to pre-AIA law?
The AIA treats an inventor’s own prior use differently from pre-AIA law. Under the AIA, an inventor’s own public use is subject to the same rules as third-party public uses, but with important exceptions. The MPEP explains: “The public use provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope, with respect to…
Read MoreWhat is the significance of naming inventors in publications and patent applications?
The naming of inventors in publications and patent applications is crucial for determining whether a disclosure qualifies for the grace period inventor-originated disclosure exception. The MPEP provides specific guidance: “This means that in circumstances where an application names additional persons as joint inventors relative to the persons named as authors in the publication (e.g., the…
Read MoreHow can an applicant identify grace period inventor-originated disclosures?
Applicants can identify grace period inventor-originated disclosures in several ways: Include a statement in the patent application specification upon filing. The MPEP 2153.01(a) states: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a).” Provide a copy of the grace period…
Read MoreHow can an applicant establish that a disclosure falls under the grace period inventor-originated disclosure exception?
An applicant can establish that a disclosure falls under the grace period inventor-originated disclosure exception in several ways: Apparent from the disclosure itself: If the disclosure was made one year or less before the effective filing date, names the inventor or a joint inventor as an author, and does not name additional persons as authors,…
Read MoreWhat is the grace period for paying maintenance fees?
The grace period for paying maintenance fees is specified in 37 CFR 1.362(e). While MPEP 2531 doesn’t explicitly state the duration of the grace period, it references this regulation: “Reply to the notice is required prior to expiration of the grace period provided by 37 CFR 1.362(e) in order to avoid the expiration of the…
Read MoreHow does the “grace period non-inventor disclosure exception” work in patent law?
The “grace period non-inventor disclosure exception” is a provision in 35 U.S.C. 102(b)(1)(B) that protects inventors from certain disclosures made by others within one year of their patent application filing. This exception is explained in MPEP 2153: “[A] disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art…
Read MoreHow can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection?
How can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection? An applicant can use the grace period inventor’s disclosure exception under 35 U.S.C. 102(b)(1)(A) to overcome a 102(a)(1) rejection. According to MPEP 2152.06: “An applicant may overcome a rejection by filing an affidavit or declaration under 37 CFR 1.130(a)…
Read MoreWhat is a grace period inventor-originated disclosure?
A grace period inventor-originated disclosure is a type of prior art exception under the America Invents Act (AIA). This exception allows inventors to disclose their invention within a certain period before filing a patent application without having that disclosure count as prior art against their own application. The MPEP section 2153 refers to this concept:…
Read More