Patent Renewal and Validation

Getting a patent granted in a territory is indeed a major milestone. After this, a critical aspect that remains to be taken care of by a Patentee is to maintain the granted patents/ portfolio by regularly paying patent renewal fees or patent maintenance fees, which are also interchangeably referred to as Annuities. Maintaining a multi-jurisdictional portfolio of patents could mean steering through a maze of different costs, timelines, and laws. Missing to pay the patent maintenance fee or patent renewal fee could be costly, with patentees sometimes losing out on the right to the patent altogether.

patent renewal and validationThe applicable patent renewal fee is paid to the respective patent offices in a manner acceptable to them, wherein some territories require payment of maintenance fee only after a patent has been granted, while some others require maintenance even before grant.

In Europe, a patent application filed with the European Patent Office requires payment of a yearly maintenance fee in respect of a patent application pending with the EPO. The same becomes due and applicable from the third year from the date of filing the patent application. Therefore, a patent applicant must bear this cost even if the patent application has not yet examined or granted by the EPO.

Now, the above might appear simple, but things could get complicated once the patent is granted since there is an additional requirement to validate and maintain the patent in each member country separately. To elaborate this a bit further, the European Patent Office (EPO) currently has 38 member states and certain other Extension states and Validation states (see the full list here). European Patent Validation is the process of selecting/ designating states and converting the granted European patent to a national patent in such states. So, therefore, after the grant, during the term of the European patent, several maintenance fees are payable to the national patent offices, where the patent has been validated and is desired to be kept in force. The actual requirements, including the fee, vary with each EPO member states.

Missing the ordinary due date to pay the patent maintenance fee could lead to an escalation in the costs by way of payment of revival fee or extension fee or surcharge (say by means of a petition for condonation of delay). In certain cases, failure to timely pay the fee could lead to the patent getting lapsed, which would essentially mean loss of crucial rights by the patent holder, which in turn could mean unanticipated loss of benefits arising from holding the patent, be it revenue or market position.

Managing patent renewals through outside counsel in each territory could be a costly affair due to the higher handling fee involved, while sometimes managing the whole affair in-house may turn out to be a cumbersome exercise requiring a lot of coordination and control. Global Patent Filings (GPF) can provide a fine balance between these two ends with its team of experts handling all aspects of maintaining the portfolio at clear-cut fixed reasonable pricing. Global Patent Filings (GPF) can assist you by providing a reliable and transparent patent renewal service. We can support a patentee in the evaluation and assessment of their patent portfolio, budgeting as well as monitoring deadlines, and attending to payment of applicable fees.

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