Maintenance fee (patent)
Encyclopedia
Maintenance fees or renewal fees are fees that are paid to maintain a granted patent
in force. Some patent laws require the payment of maintenance fees for pending patent application
s. Not all patent laws require the payment of maintenance fees and different laws provide different regulations concerning not only the amount payable but also the regularity of the payments. In countries where maintenance fees are to be paid annually, they are sometimes called patent annuities.
requires that parties to the Convention should provide a six-month grace period for paying maintenance fees:
are not subject to the payment of maintenance fees. However, maintenance fees may fall due to designated/elected national and regional offices. If renewal fees have become due by the time the national phase could start, they must be paid before the expiration of the time limit applicable for entering the national phase.
, maintenance fees for a patent application, or a patent issued from the application, is due on each anniversary of the filing date of the application, beginning on the second anniversary. The amount due each year escalates during the life of the patent or patent application.
If the maintenance fee is not paid (by the applicant or agent of record) by the due date with respect to a patent application, the application is deemed abandoned. The abandoned application may be reinstated within 12 months of the date of abandonment, by filing a request for reinstatement with payment of the maintenance fee that is due and the reinstatement fee.
The maintenance fee for a patent may be paid within a one year grace period after the due date, with the payment of a late fee. If the required fee has not been paid when the grace period expires, the patent lapses.
in respect of pending European patent applications in respect of the third year from the date of filing. These fees are paid in advance of the year in which they are due (such that the renewal fee for the third year falls due two years from the date of filing) and fall due on the last day of the month containing the anniversary of the date of filing. Renewal fees may not be validly paid more than three months before they fall due.
If the payment of a renewal fee for a European patent application is not made in due time, the renewal fee may still be validly paid within 6 months of the due date, provided that the additional fee provided by is paid within the 6 months as well. For the calculation of the 6-month additional period, the so-called de ultimo ad ultimo rule is applied by the EPO. According to this rule, the six-month period runs "from the last day of the month to the last day of the month". For instance, if a renewal fee was due in February 2004, the additional fee fell due on August 31, 2004 (Tuesday), i.e. 6 months from the end of February 2004.
The obligation to pay renewal fees terminates with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published. Subsequently, renewal fees are payable to the national offices of the EPC Contracting States in which the European patent is brought into effect. Each Contracting State then pays the European Patent Organisation
a proportion of each renewal fee received for a European patent in that State.
Whereas for a pending European patent application an applicant must pay a single maintenance fee at the EPO, it may be much more costly to pay several maintenance fees to the several national patent offices for maintaining a granted European patent in a number of countries. This however depends on the number of countries in which the patent proprietor wants to maintain its European patent into force. For instance, whereas the renewal fee is 1420 euros for the 10th to 20th year at the EPO (as of April 2010), the sum of national renewal fees exceeds respectively 7 000 euros and 20 000 euros for the 10th and 20th year.
approved the cancellation of all maintenance fees due for Italian patents (including European patent
s validated in Italy
), utility model
s and design
s, as from 2006-01-01. Although the fees were reintroduced on 2007-01-02, the actual amounts of the fees were not announced until 2007-04-06. Consequently, for any fees that fell due between 2007-01-02 and 2007-04-30, the time limit for paying these was extended to 2007-06-30. Some, including Roland Grossenbacher
, then chairman of the Administrative Council of the European Patent Organisation
, considered that the abolishment of annuity fees in Italy was an error, because, if annuities were abolished, "all patents would remain in force up to the 20th year."
does not require renewal fees to be paid in respect of pending applications but a granted patent must be renewed on the 4th anniversary of the filing date and every year after that.
Historically, and in contrast to most other European countries and the European Patent Office, the law in the United Kingdom required that renewal fees be paid on the anniversary of the filing date rather than on the last day of the month. The Patents (Amendment) Rules 2005, which came into effect on 1 October 2005, ensure that any period prescribed for payment of a renewal fee does not expire until the end of the month in which the renewal date falls.
are due 3½, 7½ and 11½ years after grant of the patent. No maintenance fees are due while an application is pending. Design patent
s and plant patents
are not subject to maintenance fees at all. Maintenance fees may not be paid in advance; the patentee must wait until the payment window opens six months before the due date before paying a maintenance fee. At the end of the half-year window during which a maintenance fee may be paid, a six-month grace period begins during which a patentee may still pay the maintenance fee along with a small surcharge ($65 as of 2011) in order to maintain the patent. If the maintenance fee has not been paid at the conclusion of the grace period, the patent expires for non-payment of maintenance fees. It can be revived, however, up to two years after the maintenance fee due date by a petition showing that the non-payment was unintentional, or at any time if the non-payment was unavoidable. (This petition carries a much larger fee: $700 if unavoidable or $1,640 if unintentional, as of 2011.)
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
in force. Some patent laws require the payment of maintenance fees for pending patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s. Not all patent laws require the payment of maintenance fees and different laws provide different regulations concerning not only the amount payable but also the regularity of the payments. In countries where maintenance fees are to be paid annually, they are sometimes called patent annuities.
Rationale
Research is reported indicating that renewal fees can be used to improve the innovation incentives generated by patent rights.Paris Convention
Article 5bis of the Paris ConventionParis Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...
requires that parties to the Convention should provide a six-month grace period for paying maintenance fees:
- (1) A period of grace of not less than six months shall be allowed for the payment of the fees prescribed for the maintenance of industrial property rights, subject, if the domestic legislation so provides, to the payment of a surcharge.
- (2) The countries of the Union shall have the right to provide for the restoration of patents which have lapsed by reason of non–payment of fees.
Patent Cooperation Treaty
International patent applications filed under the Patent Cooperation TreatyPatent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
are not subject to the payment of maintenance fees. However, maintenance fees may fall due to designated/elected national and regional offices. If renewal fees have become due by the time the national phase could start, they must be paid before the expiration of the time limit applicable for entering the national phase.
Canada
In CanadaCanada
Canada is a North American country consisting of ten provinces and three territories. Located in the northern part of the continent, it extends from the Atlantic Ocean in the east to the Pacific Ocean in the west, and northward into the Arctic Ocean...
, maintenance fees for a patent application, or a patent issued from the application, is due on each anniversary of the filing date of the application, beginning on the second anniversary. The amount due each year escalates during the life of the patent or patent application.
If the maintenance fee is not paid (by the applicant or agent of record) by the due date with respect to a patent application, the application is deemed abandoned. The abandoned application may be reinstated within 12 months of the date of abandonment, by filing a request for reinstatement with payment of the maintenance fee that is due and the reinstatement fee.
The maintenance fee for a patent may be paid within a one year grace period after the due date, with the payment of a late fee. If the required fee has not been paid when the grace period expires, the patent lapses.
China
No annuity (maintenance) fees need to be paid while applications are pending. Once granted of the patent maintenance fees are due based on the anniversary of application date. The unpaid fees while the patent was pending have to be paid on grant.European Patent Office
Renewal fees are payable to the European Patent OfficeEuropean Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
in respect of pending European patent applications in respect of the third year from the date of filing. These fees are paid in advance of the year in which they are due (such that the renewal fee for the third year falls due two years from the date of filing) and fall due on the last day of the month containing the anniversary of the date of filing. Renewal fees may not be validly paid more than three months before they fall due.
If the payment of a renewal fee for a European patent application is not made in due time, the renewal fee may still be validly paid within 6 months of the due date, provided that the additional fee provided by is paid within the 6 months as well. For the calculation of the 6-month additional period, the so-called de ultimo ad ultimo rule is applied by the EPO. According to this rule, the six-month period runs "from the last day of the month to the last day of the month". For instance, if a renewal fee was due in February 2004, the additional fee fell due on August 31, 2004 (Tuesday), i.e. 6 months from the end of February 2004.
The obligation to pay renewal fees terminates with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published. Subsequently, renewal fees are payable to the national offices of the EPC Contracting States in which the European patent is brought into effect. Each Contracting State then pays the European Patent Organisation
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
a proportion of each renewal fee received for a European patent in that State.
Whereas for a pending European patent application an applicant must pay a single maintenance fee at the EPO, it may be much more costly to pay several maintenance fees to the several national patent offices for maintaining a granted European patent in a number of countries. This however depends on the number of countries in which the patent proprietor wants to maintain its European patent into force. For instance, whereas the renewal fee is 1420 euros for the 10th to 20th year at the EPO (as of April 2010), the sum of national renewal fees exceeds respectively 7 000 euros and 20 000 euros for the 10th and 20th year.
Italy
In a widely criticised move the Italian ParliamentParliament of Italy
The Parliament of Italy is the national parliament of Italy. It is a bicameral legislature with 945 elected members . The Chamber of Deputies, with 630 members is the lower house. The Senate of the Republic is the upper house and has 315 members .Since 2005, a party list electoral law is being...
approved the cancellation of all maintenance fees due for Italian patents (including European patent
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
s validated in Italy
Italy
Italy , officially the Italian Republic languages]] under the European Charter for Regional or Minority Languages. In each of these, Italy's official name is as follows:;;;;;;;;), is a unitary parliamentary republic in South-Central Europe. To the north it borders France, Switzerland, Austria and...
), utility model
Utility model
A utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below...
s and design
Industrial design
Industrial design is the use of a combination of applied art and applied science to improve the aesthetics, ergonomics, and usability of a product, but it may also be used to improve the product's marketability and production...
s, as from 2006-01-01. Although the fees were reintroduced on 2007-01-02, the actual amounts of the fees were not announced until 2007-04-06. Consequently, for any fees that fell due between 2007-01-02 and 2007-04-30, the time limit for paying these was extended to 2007-06-30. Some, including Roland Grossenbacher
Roland Grossenbacher
Dr. Roland Edouard Grossenbacher is a Swiss attorney at law, who served as chairman of the Administrative Council of the European Patent Organisation from March 5, 2000 to March 4, 2009. He was appointed at this post for a first three-year term on 5 March 2000. He was then reelected in 2002 for a...
, then chairman of the Administrative Council of the European Patent Organisation
Administrative Council of the European Patent Organisation
The Administrative Council of the European Patent Organisation is one of the two organs of the European Patent Organisation , the other being the European Patent Office . The Administrative Council acts as the Organisation's supervisory body as well as, to a limited extent, its legislative body...
, considered that the abolishment of annuity fees in Italy was an error, because, if annuities were abolished, "all patents would remain in force up to the 20th year."
United Kingdom
The United KingdomUnited Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
does not require renewal fees to be paid in respect of pending applications but a granted patent must be renewed on the 4th anniversary of the filing date and every year after that.
Historically, and in contrast to most other European countries and the European Patent Office, the law in the United Kingdom required that renewal fees be paid on the anniversary of the filing date rather than on the last day of the month. The Patents (Amendment) Rules 2005, which came into effect on 1 October 2005, ensure that any period prescribed for payment of a renewal fee does not expire until the end of the month in which the renewal date falls.
United States
Maintenance fees on utility patents in the United StatesUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
are due 3½, 7½ and 11½ years after grant of the patent. No maintenance fees are due while an application is pending. Design patent
Design patent
In the United States, a design patent is a patent granted on the ornamental design of a functional item. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers and computer icons are examples of objects that are covered by design...
s and plant patents
Plant breeders' rights
Plant breeders' rights , also known as plant variety rights , are rights granted to the breeder of a new variety of plant that give him exclusive control over the propagating material and harvested material of a new variety for a number of years.With these rights, the breeder can choose...
are not subject to maintenance fees at all. Maintenance fees may not be paid in advance; the patentee must wait until the payment window opens six months before the due date before paying a maintenance fee. At the end of the half-year window during which a maintenance fee may be paid, a six-month grace period begins during which a patentee may still pay the maintenance fee along with a small surcharge ($65 as of 2011) in order to maintain the patent. If the maintenance fee has not been paid at the conclusion of the grace period, the patent expires for non-payment of maintenance fees. It can be revived, however, up to two years after the maintenance fee due date by a petition showing that the non-payment was unintentional, or at any time if the non-payment was unavoidable. (This petition carries a much larger fee: $700 if unavoidable or $1,640 if unintentional, as of 2011.)