Maintenance fee (patent)

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Maintenance fees or renewal fees are fees 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.

Contents

Rationale

Research is 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 starts, 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, are 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. [4]

China

No annuity (maintenance) fees need to be paid while applications are pending. [5] Once granted of the patent maintenance fees are due based on the anniversary of application date. [6] 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. [7] 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. [8] Renewal fees may not be validly paid more than three months before they fall due, except for the third renewal fee which can be paid up to six months before its due date (in accordance with amended Rule 51(1) EPC in force since April 2018). [9] [10]

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. [11] For the calculation of the 6-month additional period, the so-called de ultimo ad ultimo rule is applied by the EPO. [9] According to this rule, the six-month period runs "from the last day of the month to the last day of the month". [12] 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. [13] 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. [14]

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 January 1, 2006. [15] Although the fees were reintroduced on January 2, 2007, [16] the actual amounts of the fees were not announced until April 6, 2007. Consequently, for any fees that fell due between January 2, 2007, and April 30, 2007, the time limit for paying these was extended to June 30, 2007. [17] 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." [18]

Russian Federation

Patent maintenance fees are due in Russia every year starting with the third year after the application date. [19] The maintenance fee increases from 1,700 roubles (22.43 US$) on the third year to 16,200 roubles ($213.73) on the twentieth year. Up to 5-fold discounts are available for individual inventors, small and non-profit businesses, and those, who are willing to license their patents under nominal cost and non-discriminatory terms. [20] Russian law firms charge substantially larger "payment processing fees" than what Rospatent charges as patent maintenance fees. [21] [ failed verification ]

However, since June 23, 2022 most foreign patent owners have been unable to make patent maintenance payments in Russia, and their patents have expired. This is because Rospatent requires all payments to be processed via Central Bank of Russia, and this bank has been a subject of sanctions imposed by the United States and its allies. [22]

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. [23]

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. Following amendments made by the Patents Act 2004, The Patents (Amendment) Rules 2005, which came into effect on 1 October 2005, ensured 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

For all issued utility patents stemming from applications filed on or after December 12, 1980, the USPTO requires three renewal payments at 3½, 7½ and 11½ years after the date of grant (the payments can be made no sooner than 6 month prior to the due date). [24] [25] No maintenance fees are due while an application is pending. [26]

Several adjustments have been approved by the Congress since:

Design patents and plant patents are not subject to maintenance fees at all. [27]

Maintenance fees may not be paid in advance; [28] 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 (as of 2016: $160 for a large entity, $80 for a small entity; and $40 for a micro entity) in order to maintain the patent. [29] If the maintenance fee has not been paid at the conclusion of the grace period, the patent expires for non-payment of maintenance fees. However, the patent can be revived, by a petition indicating that the non-payment was unintentional. [30]

The data released by the USPTO in 2023 [31] shows that the rate of patent maintenance remained fairly constant over the last 20 years: first patent maintenance fees were paid for 86% of issued patents, the second - for 67%, and the third - for 44%.

Related Research Articles

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The OncoMouse or Harvard mouse is a type of laboratory mouse that has been genetically modified using modifications designed by Philip Leder and Timothy A Stewart of Harvard University to carry a specific gene called an activated oncogene. The activated oncogene significantly increases the mouse's susceptibility to cancer, and thus makes the mouse a suitable model for cancer research.

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

Under United States patent law, the term of patent, provided that maintenance fees are paid on time, is 20 years from the filing date of the earliest U.S. or international (PCT) application to which priority is claimed.

Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

The term of a patent is the maximum time during which it can be maintained in force. It is usually expressed in a number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, annuities or maintenance fees have to be regularly paid in order to keep the patent in force. Thus, a patent may lapse before its term if a renewal fee is not paid in due time.

In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.

In patent law, a disclaimer are words identifying, in a claim, subject-matter that is not claimed or another writing disclaiming rights ostensibly protected by the patent. By extension, a disclaimer may also mean the amendment consisting in introducing a negative limitation in an existing claim, i.e. "an amendment to a claim resulting in the incorporation therein of a 'negative' technical feature, typically excluding from a general feature specific embodiments or areas". The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates their application to an enormous variety of different situations. The MPEP is based on Title 37 of the Code of Federal Regulations, which derives its authority from Title 35 of the United States Code, as well as on case law arising under those titles. The first version of the MPEP was published in 1920 by the Patent and Trademark Office Society.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

The involvement of the public in patent examination is used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

<span class="mw-page-title-main">Backlog of unexamined patent applications</span>

Although not clearly defined, the backlog of unexamined patent applications consists, at one point in time, of all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and in 2009 it reportedly continued to grow. Alone, the United States Patent and Trademark Office (USPTO) was reported to have, in 2009, a backlog of more than 700,000 patent applications.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

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. ↑ "Patent Fees". Canadian Intellectual Property Office . Retrieved 1 April 2015.
  5. ↑ SIPO web site, http://english.sipo.gov.cn/laws/lawregulations/201101/t20110119_566244.html [ permanent dead link ]
  6. ↑ Resources, MPEP. "MPEP". www.uspto.gov. Retrieved 2023-10-09.
  7. ↑ Article 86(1) EPC
  8. ↑ Rule 51 EPC (formerly Rule 37 EPC 1973).
  9. 1 2 Guidelines for Examination in the EPO , section a-x, 5.2.4 : "Renewal fees".
  10. ↑ "Enhancement of Euro-PCT route: payment of the third year renewal fee". EPO. March 20, 2018. Retrieved 23 March 2018. Under amended Rule 51(1) EPC, the third year renewal fee can be paid up to six months before its due date.
  11. ↑ Rule 51(2) EPC (formerly Rule 37(2) EPC 1973)
  12. ↑ Decision J 4/91 of October 22, 1991, Legal Board of Appeal 3.1.1 of the European Patent Office. Published in OJ 8/1992, 402.
  13. ↑ Article 86(4) EPC
  14. ↑ Article 39 EPC
  15. ↑ "Official fees cancelled for patents, utility models and designs in Italy as from 1 January 2006". Società Italiana Brevetti. 2005-12-22. Retrieved 2006-08-10.
  16. ↑ "Green Light for Reintroduction of Patent, Utility Model and Design Fees". Società Italiana Brevetti. 2007-01-11. Retrieved 2007-01-11.
  17. ↑ (in 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 ... [ permanent dead link ]. Consulted on May 24, 2007.
  18. ↑ Managing Intellectual Property, Fees may rise as EPO stresses quality (Interview: Roland Grossenbacher), February 1, 2008
  19. ↑ "The PCT Applicant's Guide" (PDF).
  20. ↑ "Снижение финансовых затрат разработчиками при создании и патентовании результатов интеллектуальной деятельности".
  21. ↑ "Поддержание в силе охранных документов".
  22. ↑ "Patents Are Winding Down in Russia".
  23. ↑ Renewing your patent Archived December 2, 2006, at the Wayback Machine section on UK Patent Office website and Rule 39 Archived February 26, 2007, at the Wayback Machine of the Patents Rules 1995 (as amended)
  24. ↑ "MPEP Chapter 2500 Maintenance Fees (Rev. 10.2019)" (PDF). USPTO. June 2020. Retrieved 24 February 2023.
  25. ↑ 35 USC 41(b)(1)
  26. ↑ USPTO FY 2009 FEE SCHEDULE
  27. ↑ "§ 2504: Patents Subject to Maintenance Fees". Manual of Patent Examining Procedure . United States Patent and Trademark Office. 2008-12-18. Retrieved 2009-04-13.
  28. ↑ 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.
  29. ↑ 37 C.F.R. § 1.362; MPEP §§ 2501, 2504.
  30. ↑ 37 C.F.R. § 1.378; MPEP § 2590.
  31. ↑ "Agency Financial Report" (PDF). USPTO. 2023.
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