Patent Update: The Long-Term Consequences of Not Paying Maintenance Fees

December
,
2018

Maintenance fees must be paid to the U.S. Patent and Trademark Office (USPTO) to keep a patent in force. If the invention covered by the patent is not in use at the time a maintenance fee becomes due or if the patent owner is short of funds, the patent owner may decide to not pay the fee. Long-term considerations, however, should be factored into the decision to make or not make the payment. The importance of these considerations is demonstrated in the case of In Re: Rembrandt Technologies LP Patent Litigation.

The lawsuit involved nine patents, over three dozen defendants, and ten years of proceedings at the trial court level. The patents, which relate to cable modem technology and over-the-air signals, were originally owned by Paradyne Networks, Inc., and later acquired by Rembrandt Technologies, LLC, and Rembrandt Technologies, LP. The defendants were cable companies located throughout the U.S., and Rembrandt sued them all for patent infringement. As the litigation proceeded, the court issued rulings on how the claims of the various patents should be interpreted. Because these rulings imposed a narrower scope of coverage than Rembrandt was seeking, Rembrandt withdrew all of its infringement claims within the first six years.

The defendants asked the trial court to require Rembrandt to reimburse them...

Author Bios: 

M. Henry Heines

M. Henry Heines, PhD, JD, (Email: mhheines@comcast.net; Website: http://henryheines.com) is a patent attorney and an author, speaker, and consultant on patent-related topics for lawyers, as well as for scientists, engineers, and managers in technology companies, and has served as an expert witness in patent litigation. He began his career as a research engineer in the chemicals industry and worked in corporate patent practice before entering private practice, including 25 years as a partner in the firm now...Read more

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