Maintenance fee (patent)

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 applications. 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.^[1]

International treaties

Paris Convention

Article 5bis of the Paris Convention requires that parties to the Convention should provide a six-month grace period for paying maintenance fees:^[2]

(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 Treaty 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.^[3]

National and regional legislations

Canada

In Canada, 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.^{[citation needed]}

China

No annuity (maintenance) fees need to be paid while applications are pending.^{[4][not in citation given]} Once granted of the patent maintenance fees are due based on the anniversary of application date.^{[citation needed]} The unpaid fees while the patent was pending have to be paid on grant.^{[citation needed]}

European Patent Office

Renewal fees are payable to the European Patent Office in respect of pending European patent applications in respect of the third year from the date of filing.^[5] 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.^[6] Renewal fees may not be validly paid more than three months before they fall due.^[7]

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 Rule 51(2) EPC is paid within the 6 months as well.^[8] For the calculation of the 6-month additional period, the so-called de ultimo ad ultimo rule is applied by the EPO.^[7] According to this rule, the six-month period runs "from the last day of the month to the last day of the month".^[9] 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.^[10] 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.^[11]

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)^[12], the sum of national renewal fees exceeds respectively 7 000 euros and 20 000 euros for the 10th and 20th year.^{[13][original research?]}

Italy

In a widely criticised move the Italian Parliament approved the cancellation of all maintenance fees due for Italian patents (including European patents validated in Italy), utility models and designs, as from 2006-01-01.^[14] Although the fees were reintroduced on 2007-01-02,^[15] 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.^[16] 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." ^[17]

United Kingdom

The United Kingdom 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.^[18]

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 States are due 3½, 7½ and 11½ years after grant of the patent. No maintenance fees are due while an application is pending.^[19] Design patents and plant patents are not subject to maintenance fees at all.^[20] Maintenance fees may not be paid in advance;^[21] 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.^[22] 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.^[23] (This petition carries a much larger fee: $700 if unavoidable or $1,640 if unintentional, as of 2011.^[24])

References

1. ^ Reported by Professor Mark Schankerman, Professor of Economics at the London School of Economics, cited in Jeremy Phillips, "Strategies to Improve Patenting and Enforcement", IPKat, 29 May 2008. Consulted on June 1, 2008.
2. ^ Article 5bis of the Paris Convention for the Protection of Industrial Property: All Industrial Property Rights: Period of Grace for the Payment of Fees for the Maintenance of Rights; Patents: Restoration
3. ^ Paragraph 21 of the PCT Applicant’s Guide – Volume II – National Phase
4. ^ SIPO web site, When are annual fees due in China?, FAQ, 2009-04-08. Consulted on February 26, 2010.
5. ^ Article 86(1) EPC
6. ^ Rule 51 EPC (previously Rule 37 EPC 1973).
7. ^ ^{a b} Guidelines for Examination in the EPO a.xi.5.2.4 , Renewal fees. (Reflecting the changes to Rule 51(1) EPC as of April 1, 2009).
8. ^ Rule 51(2) EPC (previously Rule 37(2) EPC 1973)
9. ^ Decision J4/91 of October 22, 1991, Legal Board of Appeal 3.1.1 of the European Patent Office. Published in OJ 8/1992, 402.
10. ^ Article 86(4) EPC
11. ^ Article 39 EPC
12. ^ Supplement 1 to Official Journal 3, 2010, Schedule of fees and expenses applicable as from 1 April 2010
13. ^ National renewal fees for maintaining a granted European patent
14. ^ "Official fees cancelled for patents, utility models and designs in Italy as from 1 January 2006". Società Italiana Brevetti. 2005-12-22. http://www.sib.it/engsib/novita/pat/221205.htm. Retrieved 2006-08-10. 
15. ^ "Green Light for Reintroduction of Patent, Utility Model and Design Fees". Società Italiana Brevetti. 2007-01-11. http://www.sib.it/engsib/novita/pat/110107.htm. Retrieved 2007-01-11. 
16. ^ (Italian) Official decision: www.gazzettaufficiale.it, DECRETO 2 Aprile 2007 Determinazione dei diritti sui brevetti e sui modelli, in attuazione del comma 851, dell'articolo 1, della legge 27 dicembre 2006, n. 296. (GU n. 81 del 6-4-2007 ) - IL MINISTRO DELLO SVILUPPO ECONOMICO di concerto con IL MINISTRO DELL'ECONOMIA E DELLE FINANZE .... Consulted on May 24, 2007.
17. ^ Managing Intellectual Property, Fees may rise as EPO stresses quality (Interview: Roland Grossenbacher), February 1, 2008
18. ^ Renewing your patent section on UK Patent Office website and Rule 39 of the Patents Rules 1995 (as amended)
19. ^ USPTO FY 2009 FEE SCHEDULE
20. ^ "§ 2504: Patents Subject to Maintenance Fees". Manual of Patent Examining Procedure. United States Patent and Trademark Office. 2008-12-18. http://www.uspto.gov/web/offices/pac/mpep/documents/2500_2504.htm#sect2504. Retrieved 2009-04-13. 
21. ^ 35 U.S.C. § 41(f) permits maintenance fees to be adjusted every year on October 1 to reflect any fluctuations during the previous 12 months in the Consumer Price Index as determined by the Secretary of Labor. MPEP § 2506.
22. ^ 37 C.F.R. § 1.362; MPEP §§ 2501, 2504.
23. ^ 37 C.F.R. § 1.378; MPEP § 2590.
24. ^ 37 C.F.R. § 1.20(i).