Q: I have a patent assignee who failed to pay the maintenance fees. Do I have any recourse to reclaim abandoned IP?
Can I petition the patent office, pay the fees, and recapture the abandoned patent (for lack of fee payment) ? Are there other remedies? I am the inventor of over 25 US patents. I filed the last patent application pro se. It was granted without questions from the examiners.
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A:
Regaining patent rights after the assignee has failed to pay maintenance fees can be challenging, but there are a few potential avenues to explore:
1. Petition to Accept Delayed Payment: If the maintenance fee payment window has not been closed for too long (usually within 24 months of the due date), you may file a petition to accept a delayed payment. This petition must include the required fees and a statement explaining the delay. However, this option is not available if the delay exceeds the 24-month grace period.
2. Petition to Revive: If the non-payment of maintenance fees was unintentional, you can file a petition to revive the patent. This petition must be filed within two years of the patent expiration date and must include a statement that the delay in payment was unintentional, along with the required fees.
3. Assignee Cooperation: If the assignee is willing to cooperate, they can file a petition to accept the delayed payment or revive the patent. As the inventor, you may need to negotiate with the assignee to take this action.
4. Dispute Assignee Ownership: If you believe that the assignee breached the assignment agreement or there are other grounds to challenge their ownership, you may need to seek legal action to reclaim your rights to the patent. This can be a complex process and may require the assistance of an attorney specializing in patent law.
5. Refile the Patent Application: In some cases, you may be able to refile the patent application as a new application, claiming priority to the original application. However, this option is subject to various legal requirements and time limitations.
Given your extensive experience with patents and your success in filing a patent application pro se, you may be well-equipped to navigate some of these options on your own. However, considering the complexity of patent law, it is generally advisable to consult with a patent attorney to discuss your specific situation and determine the most appropriate course of action.
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