Whether you’ve patented your design with a design patent or you’re thinking about obtaining a design patent, you probably heard that some patents require the payment of maintenance fees. So, do you have to pay maintenance fees for a design patent? We will answer this question below.
Do Design Patents Have Maintenance Fees?
In the United States, design patents do not have maintenance fees. Maintenance fees are only required for utility patents. The patent office only requires utility patent holders to pay maintenance fees to keep their patents from expiring, they aren’t required for any other type of patent in the United States.
So, what exactly are patent maintenance fees and why are they required for utility patents? Maintenance fees are periodic fees that the patent office requires patent holders to pay to keep their patents as granted. Maintenance fees are required at 3.5 years, 7.5 years, and 11.5 years. The maintenance fees go up at every period, requiring the patent holder to pay more money to keep his patent from expiring.
The patent office requires patent holders to pay maintenance fees to fund the examination of new patent applications. That said, by imposing maintenance fees, many patent holders relinquish their patent rights because they can’t or don’t want to pay the maintenance fees, this frees up new technology for others to use.
What Do Design Patents Protect?
Design patents are issued by the patent to protect the aesthetics or appearance of an invention. Said differently, design patents protect how an invention looks and not how it works. Utility patents protect how an invention works. Design patents often seek design patents to stop others from copying their designs and selling them as their own. Here is a great article to understand what design patents protect!
How Much Do Design Patents Cost?
In the United States, here are the following costs associated with obtaining a design patent:
- USPTO Filing Fees: $50 – $200
- USPTO Search Fees: $40 – $160
- USPTO Examination Fees: $150 – $600
- USPTO Maintenance Fees: No Maintenance fees for design patents
- Attorneys Fees: $1,500 – $3,500
So, if you have a design that you want to protect, you should expect to pay anywhere from $1,740 to $4,460 to patent your design in the United States. Just remember that the fees we summarized including having an attorney assist you with the preparation and filing of your design patent application.
Although applicants are not required to hire a design patent attorney, the patent office encourages them to hire an attorney to assist them with the preparation, filing, and prosecution of their patent application. Check out this awesome article on the costs of patenting your invention.
Do Design Patents Expire?
Unfortunately for design patent holders, design patents do expire. The patent office grants design patents that last for 15 years from the date the patent office grants an inventor’s design patent application.
During the 15-year patent term, the holder of a design patent can stop others from using, making, and selling the patented design. This allows the inventor of the design to exclusively profit from his design. Once a design patent expires, it cannot be renewed and the design falls into the public domain. Once the design can be public, anyone can use the design unless the design is protected by another form of intellectual property (IP) protection. This article has some excellent information on the expiration of design patents.
Can You Protect an Invention with Both a Design Patent and Utility Patent?
Some inventions qualify for both design patent protection, as well as utility patent protection. The design patent would protect the appearance of the invention, while the utility patent will protect the function of the invention or how the invention works.
If you have dual patent protection, you will have to pay maintenance fees for the utility patent. However, you won’t have to pay fees to maintain the design patent. In the event that you don’t pay the maintenance fees for the utility patent, the design patent will remain in effect only to protect the appearance or aesthetics of the invention.
Why Does the USPTO Charge Maintenance Fees?
The USPTO charges maintenance fees to generate the revenue required to run the patent office. A large sum of the maintenance fees is used to examine new patent applications. Also, by charging maintenance fees, the patent office frees up patented technology.
We say this because many inventors patent inventions and decide later down the road that they don’t want to or can’t make the maintenance fees. If they decide not to pay them, the patent expires, allowing others to make use of the once patented invention.
For some inventors, it’s just not worth it to make the maintenance fees associated with their utility patent. For example, if the invention or patented product is not selling well, it doesn’t make sense to pay thousands of dollars to maintain a patent to keep it in effect.
Whether you’re considering paying maintenance fees on an invention that you’ve already patented or you’re considering obtaining a utility patent, keep in mind that maintenance fees are pretty expensive, so unless you have an invention that you know you’ll be able to profit from, it is sometimes wise to forgo patenting your invention or paying the maintenance fees. That said, ask your attorney about what you should do if you’re in this situation.
How Often Are Maintenance Fees Due?
For a design patent issued by the USPTO, an inventor is not required to pay any maintenance fees. However, if you have a utility patent, you will have to pay maintenance fees that are due at 3.5 years, 7.5 years, and 11.5 years. Maintenance fees range from a few hundred dollars to a few thousand dollars.
How Are Maintenance Fees Paid?
Maintenance fees can be paid by heading over to the USPTO Maintenance Fee Payment Center. Once you visit the site, you will be prompted to enter your patent number, as well as the application number. You will then be sent to a page where you can make the maintenance fee payments that are due on your patent.
Do Design Patents Have to be Renewed?
Fortunately for design patent holders, design patents do not have to be renewed. They remain in effect throughout the 15-year patent term without the inventor having to renew them or pay maintenance fees to maintain them. That said, once a design patent expires, it cannot be renewed because the design falls into the public domain.
So, if you’re an inventor and you have a design that’s important to your business, try coming up with a design that’s similar enough to appeal to your customers yet different enough to qualify for a design patent.
Can You Protect a Design Without a Design Patent?
If you have a design that you want to protect, ask your attorney about the possibility of protecting it under copyright law. Some designs that qualify for a design patent may also qualify for copyright protection.
For a design to qualify for copyright protection it must be applied to a medium, such as paper, shirt, or any other object. If you have such a design, it may be automatically protected under copyright law, but you may benefit from registering it with the copyright office for enhanced protection. Registering a copyright is fairly inexpensive and maybe a good way to protect a design.
Design Patent Maintenance Fees
By now, inventors should know that they are not required to pay maintenance fees for design patents issued by the USPTO. Maintenance fees are only required to keep utility patents granted by the patent office. That said, design patents last for 15 years from the date the patent office grants them. Once a design patent expires, it cannot be renewed and becomes part of the public domain. So, if you have any general questions or comments, please feel free to leave them in the comments section below.