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Contract analysis / maintenance-fee-reminder-letter.docx
maintenance-fee-reminder-letter.docx
1037-00005 · 10 clauses
High · 1 Medium · 2 Standard · 7
1. Purpose of This Letter Standard
⚑ Commercial term
1. Purpose of This Letter Calderwood & Harkness LLP is writing in its capacity as outside patent counsel for Solstice Biomedical Devices Ltd. ("SBD" or the "Company") in connection with the CryoNova cryoablation catheter patent family. The purpose of this letter is to advise SBD of the upcoming obligation to pay the first (3.5-year) maintenance fee for U.S. Patent No. 11,284,561 (the "Patent"), which was granted by t
2. Maintenance Fee Details — 3.5-Year Fee Standard
⚑ Commercial term
2. Maintenance Fee Details — 3.5-Year Fee U.S. Patent No. 11,284,561 was issued on March 22, 2022, with twenty-four (24) claims directed to a "Cryoablation Catheter System with Variable-Zone Cooling." Under the provisions of 35 U.S.C. § 41(b), the owner of a U.S. utility patent must pay periodic maintenance fees in order to keep the patent in force for the full twenty-year term measured from the earliest effective fi
3. Consequence of Non-Payment Standard
⚑ Commercial term
3. Consequence of Non-Payment Failure to pay the 3.5-year maintenance fee — including during the six-month grace period with the applicable surcharge — will result in the Patent expiring by operation of law under 35 U.S.C. § 41(b). Expiration for non-payment of maintenance fees is automatic and does not require any affirmative action by the USPTO. Once the grace period closes on March 22, 2026, the Patent would be de
4. Small-Entity Status Confirmation Medium
⚑ Liability cap to check against exposure
4. Small-Entity Status Confirmation SBD currently qualifies as a "small entity" within the meaning of 37 C.F.R. § 1.27 for purposes of paying reduced fees to the USPTO. This status was asserted at the time of filing and has been maintained throughout prosecution and post-issuance maintenance of the Patent. The basis for SBD's small-entity qualification is as follows: (a) SBD has fewer than 500 employees. As of Decemb
5. Future Maintenance Fee Schedule Standard
⚑ Commercial term
5. Future Maintenance Fee Schedule For planning and budgeting purposes, we set forth below the full maintenance fee schedule for U.S. Patent No. 11,284,561 at the current small-entity rates as published by the USPTO: Each of the above fees may be paid without surcharge during the six-month window preceding the stated due date and may be paid with a surcharge during the six-month grace period following the stated due
6. Relationship to Portfolio Strategy Review Standard
⚑ Commercial term
6. Relationship to Portfolio Strategy Review As discussed in the Portfolio Strategy Memorandum transmitted separately to SBD and its board of directors, the go-forward treatment of U.S. Patent No. 11,284,561 is one component of the broader strategic review of SBD's CryoNova patent family. The board's forthcoming decision among the three identified portfolio scenarios will directly determine whether the 3.5-year maint
7. Request for Written Authorization Standard
⚑ Commercial term
7. Request for Written Authorization In order for Calderwood & Harkness to proceed with the maintenance fee payment on SBD's behalf, we respectfully request that SBD provide written authorization — whether by email or signed letter on Company letterhead — directing the firm to undertake the following:
1. Pay the 3.5-year maintenance fee of $1,000.00 to the USPTO on behalf of SBD during the Standard
⚑ Commercial term
1. Pay the 3.5-year maintenance fee of $1,000.00 to the USPTO on behalf of SBD during the payment window commencing March 22, 2025, and no later than the statutory due date of September 22, 2025, in connection with U.S. Patent No. 11,284,561.
2. Invoice SBD for the government fee disbursement of $1,000.00 plus any associated profe High
⚑ Non-compete / exclusivity restraint
2. Invoice SBD for the government fee disbursement of $1,000.00 plus any associated professional fees for the preparation and filing of the maintenance fee payment. We anticipate that the professional fees for this administrative processing will be nominal, consisting primarily of the time required to prepare and submit the electronic fee payment through the USPTO's Patent Maintenance Fees Storefront, verify acceptan
8. Disclaimer / Scope of Representation Medium
⚑ Liability cap to check against exposure
8. Disclaimer / Scope of Representation This letter is limited in scope to U.S. patent maintenance obligations within the scope of Calderwood & Harkness's engagement for SBD under Matter No. SBD-IP-2021-003. Our representation covers the prosecution and maintenance of the CryoNova patent family before the United States Patent and Trademark Office and does not extend to patent maintenance obligations in any other juri