Lifeline of a granted patent is regular maintenance and renewal of the application in a timely manner. Missing the maintenance timeline means abandoning the Patent before its original expiry and hence the applicant losses the patent exclusivity. Singhwal manages the renewals in a timely manner through its in-house state of art procedure and technical platform.
A patent life is ideally set 20 years from the date of filing the patent application, and the renewals of it should be done by a payment of its maintenance charges regularly on a particular date set by the patent office that depends on the filing and grant of a patent. The amount varies from country to country. And when one has numerous patents, to maintain it becomes a hectic task, for executing its patent portfolio.
Maintaining the portfolio is important; however it is a batch task having its own complexities; hence it is always suggestible to maintain the patent using an outside agency having expertise in handling renewal task which involves communicating and paying to different authorities in the local currencies of the authority. We support you not in just payments, but with budgeting for renewal tasks.
For budgeting, we send you across a form to be filled in by you with respect to the Patent families to be renewed. On entering the families, we calculate an approximate figure you need to allocate for renewals. Post receiving your interest, we keep sending you monthly proposals for patents to be renewed in a coming month. Our proposal contains near exact amount to be paid for renewals. Hence, the clients do not face any issues arise post payment adjustment with our service.
Once we receive a purchase order with respect to the proposal, we move ahead to pay the annuities. Subsequent to which we raise the bills to be settled by you by end of the month, along with receipt of annuities payment for your docketing. We keep one copy of the receipts with us, so that we can maintain the records of the payments for your future perusals.
In India, the first patent renewal fees or the maintenance fees should be paid, once a grant is given to a patent, after which the applicant should pay the grant fee including the years since filing a patent took to receive the grant, but not for the first two years. For example: If a patent is filed in 1st January 2000, and is approved to be granted in 3rd July 2003, the applicant should pay the grant fee, along with the maintenance fee from 2003.
In case, the grant happens in 2002 itself, say 31st October 2002, at the time of grant the grant fees shall be payable, and the maintenance fees shall be payable before 1st January, 2003. This timeline of fee payment has maximum six months extension period, however a prescribed fees for extension has to be filed along with the renewals.
On recording of Patent in the register of the Patents, the grant along with renewal fees is payable in three months, with maximum extension up to nine months from recorded date along with prescribed extension fees. As per Indian patent office, the applicant is categorized into three entities namely natural person and/ or start-up, small entity alone or with natural person and / or start-up and others alone or with natural person and / or start-up and/ or small entity. IPO provides physical and electronic payment of any fees including the maintenance fees. The cost for physical payment is 10% extra compared to electronic payment. In India, the renewal fees can be paid in advance for the subsequent year to come. Below provided is a compilation of maintenance fee structure (e-filing) available at Indian patent office.
Fees (RS) (e-filing/electronic payment)
| Maintenance year | Natural person(s) and/ or Startup | Small entity, alone or with natural person(s) and/ or Startup | Others, alone or with natural person(s) and/ or Startup and/ or small entity |
|---|---|---|---|
| 3rd year to 6th year | 800 | 2000 | 4000 |
| 7th year to 10th year | 2400 | 6000 | 12000 |
| 11th year to 15th year | 4800 | 12000 | 24000 |
| 16th year to 20th year | 8000 | 20000 | 40000 |
In case the applicant inadvertently missed to pay the renewal fee within the prescribed period including the six months grace period then there is a provision available to restore the lapsed patent if a request has been made within eighteen months from the date of lapse by paying the necessary fees. However, the applicant has to satisfy the controller that the failure to pay the renewal fees was unintentional and there is no delay in making the request for restoration. Upon request, if the controller satisfies that the conditions for restoration were met then the patent can be restored.
U.S.:
In US, the patent maintenance fee format is different from annuity fees available in patent offices such as India and Europe. The applicant has to pay grant fee at the time of grant of patent application. Once the patent is granted then the applicant has to pay maintenance fees only three times; at 3.5 years, 7.5 years and 11.5 years from date of grant. Six month grace period is available to pay the maintenance fees, i.e. 4 years, 8 years and 12 years. However, the applicant has to pay penalty for the late payment within the six months period. The USPTO provides different fee structure for different type of applicants. USPTO categorizes the applicant into three, namely large entity, small entity and micro entity. Eligibility for these categories are defined by USPTO.
The penalty fee for late payment has to be paid along with the respective maintenance fee within the six months period. USPTO provides an opportunity to the applicant who unintentionally missed to pay the maintenance fee within the period including the six months grace period. The applicant has to make a petition to the director of USPTO and satisfies the director that the delay was completely unintentional. In this case, the applicant has to pay the required maintenance fee and fee for petition for delayed payment. In addition to these payments, a statement has to be submitted stating that the delay to pay the maintenance fee was unintentional. Below is ca compilation of maintenance fee structure at USPTO.
Maintenance fee structure at USPTO
| Maintenance Fee Schedule | Large Entity (USD) | Small Entity (USD) | Micro Entity (USD) |
|---|---|---|---|
| Due at 3.5 years | 1600 | 800 | 400 |
| Due at 7.5 years | 3600 | 1800 | 900 |
| Due at 11.5 years | 7400 | 3700 | 1850 |
| Late payment within the period of six months | 160 | 80 | 40 |
| Petition for delayed payment | 2000 | 1000 | 500 |
It should be noted that if the maintenance fee is not paid within the timeline including the grace period then the patent will become expired due to non-payment of maintenance fees. In case, the expired period is less than two years from the scheduled maintenance time (4 years or 8 years or 12 years) then the patent office process the request immediately through electronic mode. In this circumstance, the patent office/ director decides on the petition immediately. In case, the applicant does not want to process immediately or the patent expired period is more than two years from the maintenance time then the petition has to be submitted to the patent office, USPTO.
Europe:
Unlike U.S and India, the renewal fee has to be paid for pending patent application itself. The renewal fees are due in respect of third year from the date of filing and subsequent year. The fee has to be paid by last day of the month in that due year. For example, if the patent application is filed on 9th March then the maintenance fee due is by Mar 31 of every year. The maintenance/ renewal fee has to be paid in advance for the coming year. It means that renewal fee for third year has to be paid at the end of second year; renewal fee for fourth year has to be paid at the end of third year. European patent office (EPO) also provides six months grace period for renewal fee payment. However, the applicant has to pay additional fee of 50% of the respective renewal fee. In case, the applicant fails to pay the renewal fee within the period including the grace period then the patent application is deemed to be withdrawn.
The applicant has to pay single maintenance fee during the pendency of the application before EPO. Once the patent application is granted then multiple maintenance fees have to be paid at the individual national patent offices. Hence, one must take due care to maintain the EP patent as the maintenance fee has to be paid at individual national patent office after grant of patent application. Below is a compilation of maintenance fee available at EPO.
Maintenance fee schedule at EPO
| Year of maintenance | Renewal fee (EUR) | Additional late fee (wherever applicable) (EUR) |
|---|---|---|
| 3 | 470 | 235 |
| 4 | 585 | 292.5 |
| 5 | 820 | 410 |
| 6 | 1050 | 525 |
| 7 | 1165 | 582.5 |
| 8 | 1280 | 640 |
| 9 | 1395 | 697.5 |
| 10 | 1575 | 787.5 |
| 11-20 | 1575 | 787.5 |
The renewal fees and the payment procedure mentioned by the EPO are applicable till the patent application is granted by EPO. Once the patent is granted then the fees and procedure available at the individual national patent office are applicable. For example, German patent office allows the applicant to pay maintenance fee within two months from the original due date without any additional charge. In case, the applicant missed this period then additional grace period of four months are available with minimum additional cost (50 EUR). However, if the applicant misses this six months grace period (2 months + 4 months) then the patent will be lapsed. Once the patent is lapsed due to non-payment of maintenance fee then there is a possibility to reinstate the patent. However, this is very stringent process and cannot be used for all cases.
The applicant must take due care when a patent is validated in different countries in Europe. Most of the EP countries follow yearly renewal fees and similar grace period (6 months) to pay annuity fees. Hence, the applicant has to pay the maintenance fee at the same time for the European national patent offices. However, it is highly recommended to track the maintenance fee schedule individually to avoid missing the payment or late payment.
One peculiar thing about Patent renewals is that with the years annuity fees keeps on increasing, and it’s a matter of worth to look into whether you are really working over the patent and interested to maintain it. The money saved can surely be used to maintain potential technologies and prosecuting important patent applications which make huge impact in the business.
Patent renewal management team at Singhwal is equipped with state of art monitoring system. Our system includes sending a reminder to our clients well in advance to avoid the consequence of late payment of patent maintenance fee. Our patent attorneys across the globe are updated with the patent law of their respective countries and rich experience in dealing with maintenance fee payment process. We provide quotation with near exact amount to be paid for patent maintenance and our service charge thereby to help the client free of any issues post payment of maintenance fees. We provide year wise and half year wise budget to our client’s patent portfolio in order to assist our client in preparing patent maintenance fee budget. This helps our client to decide that which patent can be maintained.