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.
The 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.
Jurisdiction Wise Renewal Terms
Various jurisdictions have different rules for patent renewal fees. Chapter 5.9 of the European Patent Guide specifies the renewal fees that are expected from the patentee. Under point 5.9.001 of Chapter 5, it specifies that the patentee is required to pay renewal fees to the EPO in respect of your European patent application. These are due in respect of the third and each subsequent year, calculated from the date of filing. Under point 5.9.003, it specifies that the payment may still be validly made up to six months after the due date, provided that an additional fee equal to 50% of the belated renewal fee is paid within the same period.
The EPO will normally send you an information letter if the renewal fee has not been paid by the due date; however, you have not entitled to base any claims on the omission of this courtesy service. Renewal fees may not be validly paid more than three months in advance of the date on which they fall due. The sole exception is the renewal fee for the third year, which may not be validly paid more than six months before it falls due.
In 35 U.S.C. 41, it talks about the patent fees wherein it specifies the filing of renewal fees. Title 37 of the Code of Federal Regulation speaks about the period set forth for which the maintenance fee is filed without any surcharge under Rule 1.362(b). 37 CFR 1.362(d) sets forth the periods when the maintenance fees for a utility patent can be paid without surcharge. Those periods, referred to generally as the "window period," are the 6-month periods preceding each due date. The "due dates" are defined in 35 U.S.C. 41(b). The window periods are (1) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (2) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (3) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment.
A maintenance fee paid on the last day of a window period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted 3 years and 6 months, 7 years and 6 months, or 11 years and 6 months after the grant of the patent.
In India, Section 53 is substantiated by Rule 80 of the Patents Act 1970 which talks about the renewal fees. Rule 80(1) says that To keep a patent in force, the renewal fees specified in the First Schedule shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration or the second or the succeeding year.
Tackling with dates
Things can 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, we can take the example of the European Patent Office (EPO). EPO currently has 38 member states and certain other Extension states and Validation states. 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. The whole process becomes very tedious to follow.
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. 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.
GPF services providing ultimate protection for IP asset
GPF provides all sorts of services for organizations with efficient data verification across various jurisdictions. The support staff along with the attorney keep the clients aware of the status of the renewal and validation. The service rendered by GPF provides better cost management making a customizable budget for the clients, worldwide.
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 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. GPF can assist you by providing a reliable and transparent patent renewal service. The expert team at GPF 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.