The Negatives of an Inventor Paying Their Own Annuities

Getting a patent can protect any revenue you make from your ideas, but the process can also be time-consuming. To keep patents valid, most governments require patent holders to pay regular fees like maintenance fees or annuities. The added expense of hiring an agent to manage your patent and paying all your annuities when they are due can seem like an unwelcome expense -- especially if you don't know how profitable your invention will be. Nonetheless, you should consider certain caveats before you decide to pay your annuities yourself.

Due Dates Can be Irregular

If you have several patents -- or even if you have only one -- it can be difficult to keep track of when all the annuities are due and how much you have to pay. Your first annuities will typically be due within three to five years of the date you applied for your patent and paid the issuance fees, depending on the country. You will then have to pay regular maintenance fees for as long as 20 years. These fees will not always be the same amount as they typically increase throughout the life of the patent. If you have patents on the same product in different countries, you will also have to pay fees at different times. U.S. patents require fees to be paid 3.5, 7.5 and 11.5 years after the date of issuance. Other countries require fees to be paid every year or at other irregular intervals.

You Could Be Sued

If you forget to pay a fee, you run the chance of losing your patent and you could be liable if you are sued by another company claiming ownership of your idea. If you are selling products marked with an expired patent, you could also be sued for falsely marking them as patented. The federal courts are responsible for interpreting the false patent marketing statute; holders of unintentionally expired patents may be able to defend themselves against law suits by arguing they did not intentionally deceive their customers. As of 2010, however, no legislation exists to allow this. Hiring an agent to manage your patent annuities helps you avoid any potential time-consuming and costly legal battles.

Reinstating an Expired Patent is Expensive

Most governments will allow you to reinstate an expired patent during a set grace period, but you will likely have to pay additional fees. These fees vary greatly depending on the size of your company and the type or age of the patent, but are generally costly. At the time of publication, fees charged by the U.S. Patent and Trademark Office for reissuing expired patents are as high as $8,800.

Reinstating an Expired Patent is Time-Consuming

It's also a lot of work to reinstate your patent if you accidentally allow it to expire. The U.S. Patent and Trademark Office, for example, requires you to show that the delay in paying your fees was unavoidable. To prove this, you will have to show the steps you made to pay your fee on time and prove that you paid as soon as you realized that the fee was late. If you have patents in several countries that expired, you will have to go through a similar process for every patent.

References

• United States Patent and Trademark Office: Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent
• United States Patent and Trademark Office: Post Issuance Fees
• WebPatent.com; Answers to Common Questions; Robert Hunter, Ph.D.
• Nolo: Getting a Patent on Your Own
• William Warren and Brian Decker; False Patent Marking Liability Avoided for Lack of Intent to Deceive; July 2010