An Overview of Patent Maintenance Fees

Patent maintenance fees, also referred to as patent annuities or patent renewal fees, are regular payments made to a patent office so as keep a certain patent in force. The rules for these fees vary across countries. They provide a source of revenue for patent offices to enable them continue providing their services. In addition, they create an incentive for holders to relinquish patents that are not offering them any commercial benefit. As soon as a patent elapses, it is possible for other people to capitalize on the idea and build upon it.

At many patent offices, maintenance fees are required both prior to the grant, in order to keep the application alive, and after a grant. They are payable at certain intervals throughout the patent’s life, which is usually 20 years. It is common for the payments to be made annually, although some patent offices allow them to be made less frequently. Generally, a payment is supposed to be made in advance of the filling date anniversary so as to keep the application or patent alive for the upcoming period. Often, there is a period after the renewal deadline whereby renewal fees can still be paid together with a penalty fee for lateness.

Utility patents are subject to maintenance fees payment every fourth, eighth and twelfth year anniversary. This is usually measured from the grant or issue date of the patent. A payment window for the maintenance fee opens every 3, 7 and 11 years after a patent’s grant. Once a supercharge has been paid, the maintenance fees can be paid for six months thereafter.

Most countries apart from the United States require the renewal fee or annual payment during the life of the patent or dependency of the patent’s application. There is a surcharge if payment of the annuity is done in the course of the 6-month period after its due date. Annuities and maintenance fees usually increase as time goes by. This means the cost of maintaining a patent in force gradually becomes greater over its life.

patent maintenance feesMaintenance of patent families with patents that relate back to one original patent application can be quite costly. This highlights the importance of patent owners putting some effort to sufficiently budget for the maintenance of pending patents and applications. This is because a rising number of patents and applications, with increasing annuities and maintenance fees, can have adverse effects on intellectual property budgets.

An excellent time to evaluate a patent or application is when the annuity or maintenance fees are due. An easy way of doing this is by associating a patent with its corresponding product or service. During development of products and services and filing of patent applications, the products and applications can be stored into a database and then linked to one another correspondingly.

When patent applications are maturing into patents, this database can be updated accordingly in a way that links the patents to the applications and products. Through a review of this data, annuities and maintenance fees can be periodically reviewed. In case a product is no longer being produced, the patent holder can decide allow the patent to lapse by not paying the maintenance fee.