You Took Over Control of a Business — How To Maintain the Patents or Trademarks

You have taken over control of a business’s intellectual property assets because:

you bought the business;

you inherited the business; or

you are now a lawyer as a new in-house counsel.

You need to manage your business’s patents or trademarks.

The simplest way to preserve your intellectual property is — (1) pay the maintenance fees; and (2) file the appropriate maintenance documents.

Patents require maintenance fees.

Federal trademark registrations require maintenance fees and maintenance documents.

What will happen if maintenance fees or maintenance documents are not filed?

A patent will expire if maintenance fees are not submitted. There is some wiggle-room if patent maintenance fees are not submitted at the proper time. In some cases, if a patent maintenance fee deadline is missed, a petition can be filed — followed by maintenance fees — so a patent will not expire. The petition needs to be filed by a “recognized party,” which is basically a patent attorney/agent or the inventor themselves.

A trademark federal registration will be cancelled if maintenance fees and documents are not submitted. There is basically no wiggle-room on missing this requirement — therefore submitting the fees and documents is very important for a federal trademark registration.

Functionally, how are a business’s patents or trademarks maintained?

Contact the lawyer who previously worked on the patent or trademark to have them maintain the patent or trademark:

Your business’s patent or trademark was likely filed by a lawyer or a group of lawyers at a law firm. After you gain control of the business and the intellectual property assets, you should get in contact with the lawyer or law firm who is the attorney of record for your patent or trademark (if you haven’t already found out during the acquisition process).

Double check to make sure the lawyer or law firm is keeping track of your patent or trademark.

Don’t assume the lawyer or law firm is keeping track because sometimes things get over looked and things change. The timing between maintenance filings for a patent is a couple years. But for a federal trademark registration, the maintenance filings can be five years or ten years, depending.

The lawyer or law firm could have changed. Your business could have changed contact information. Ten years is a long time — a lot can happen.

For a patent, to find the Attorney of Record: First, you’ll get the Patent Number, then you’ll use that Patent Number to find the Attorney of Record. For the Patent Number, go to the main United States Patent and Trademark Office, USPTO patent search page, then click on USPTO Patent Full-Text and Image Database (PatFT). Then click Quick Search. If a person is the applicant, type Last Name, First Name, and switch the Field 1 drop down menu to Applicant Name (if a company is the applicant, type the company name instead of a person’s name). In the list of patents, copy the Patent Number — or if you select the individual patent — the Patent Number is in the upper right hand corner. For the Attorney of Record, then go to Public Pair, by going to the USPTO website for portals, then click on Public Pair. In Public Pair click on the radio button for Patent Number, then in the field enter the Patent Number. Then, you’ll be in the Public Pair file, then click on the tab for Address/Attorney & Agent, which will give information about who the attorney is listed for correspondence related to the patent.

For a trademark, to find the Attorney of Record: Go to main USPTO trademark search page, then click TESS Trademark Electronic Search System — the list of federally registered trademarks. Click on Basic Word Mark Search (New User). Then type in the words in your trademark. In the list of marks that appear, click on your mark. In the file for your mark, click on the button for TSDR. In the TSDR file, within the Status Tab, click Attorney/Correspondence Information, which will show the Attorney information.

Hiring a new lawyer or law firm:

If you contact the previous lawyer or law firm, and that option isn’t available— you can always hire another lawyer or law firm.

Doing it yourself:

You can keep track of the assets yourself — just the way you will track your maintenance of other business assets/liabilities — such as your lease or state/municipal licenses.

How do you check the maintenance status of your business’s patent or trademark — and submit fees and documents — if you are doing it yourself?

For a patent: you can pay patent maintenance fees on the Patent Maintenance Fees Storefront. First, you’ll need to find the patent’s Application Number and Patent Number by using the steps above to find the individual patent file in the USPTO search. When in the individual patent file, copy the Application Number. In the Patent Maintenance Fees Storefront enter the Application Number and the Patent Number. Then pay the fees.

For a trademark: the process is more in-depth because you’ll have to file the proper document(s) (or declaration(s)) for continued use when submitting maintenance fees. You’ll be able to find the forms to submit on the Trademark Office maintenance forms page. Also, you’ll need to make a TEAS account to submit the forms. During the final steps of submitting the forms, you’ll also submit the maintenance fees within the process of submitting the forms.

John Hudak is an IP attorney (patents, trademarks, and copyrights). Law Office of John B. Hudak, Milford, CT. NYU School of Law, JD. www.hudaklegal.com.