View source for Maintenance fee (patent)

{{Short description|Fee required to maintain a patent in force}}
'''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 application]]s. 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'''.

==Rationale==
Research is indicating that renewal fees can be used to improve the innovation incentives generated by patent rights.<ref>Reported by Professor Mark Schankerman, Professor of Economics at the [[London School of Economics]], cited in [[Jeremy Phillips]], [http://ipkitten.blogspot.com/2008/05/strategies-to-improve-patenting-and.html ''"Strategies to Improve Patenting and Enforcement"''], [[IPKat]], 29 May 2008. Consulted on June 1, 2008.</ref>

==International treaties==

===Paris Convention===
Article 5bis of the [[Paris Convention for the Protection of Industrial Property|Paris Convention]] requires that parties to the convention should provide a six-month grace period for paying maintenance fees:<ref>[http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P136_18523 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''</ref>

:''(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.<ref>Paragraph 21 of the [http://www.wipo.int/pct/guide/en/gdvol2/pdf/gdvol2.pdf PCT Applicant’s Guide – Volume II – National Phase]</ref>

==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.<ref>{{cite web|url=http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00142.html|title=Patent Fees|publisher=[[Canadian Intellectual Property Office]]|accessdate=1 April 2015}}</ref>

===China===
{{Unreferenced section|date=January 2008}}
No annuity (maintenance) fees need to be paid while applications are pending.<ref>SIPO web site, http://english.sipo.gov.cn/laws/lawregulations/201101/t20110119_566244.html {{dead link|date=October 2015|fix-attempted=yes}}</ref> Once granted of the patent maintenance fees are due based on the anniversary of application date.<ref>{{Cite web |last=Resources |first=MPEP |title=MPEP |url=https://www.uspto.gov/web/offices/pac/mpep/s2506.html#:~:text=A%20maintenance%20fee%20may%20be,for%20the%20original%20utility%20patent. |access-date=2023-10-09 |website=www.uspto.gov |language=EN-US}}</ref> The unpaid fees while the patent was pending have to be paid on grant.{{Citation needed|date=November 2009}}

===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.<ref>{{EPC Article|86|1}}</ref> 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.<ref>{{EPC Rule|51}} (formerly {{EPC 1973 Rule|37}}).</ref> 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).<ref name="EPO-Guid-a-xi-5.2.4">{{EPO Guidelines|a|x|5|2|4}}: "Renewal fees".</ref><ref>{{cite web|url=http://www.epo.org/service-support/updates/2018/20180320b.html|title=Enhancement of Euro-PCT route: payment of the third year renewal fee|date=March 20, 2018|publisher=EPO|quote=Under amended Rule 51(1) EPC, the third year renewal fee can be paid up to six months before its due date.|accessdate=23 March 2018}}</ref>

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 {{EPC Rule|51|2}} is paid within the 6 months as well.<ref>{{EPC Rule|51|2}} (formerly {{EPC 1973 Rule|37|2}})</ref> For the calculation of the 6-month additional period, the so-called ''de ultimo ad ultimo'' rule is applied by the EPO.<ref name="EPO-Guid-a-xi-5.2.4"/> According to this rule, the six-month period runs "from the last day of the month to the last day of the month".<ref>[https://www.epo.org/law-practice/case-law-appeals/recent/j910004ep1.html Decision J 4/91 of October 22, 1991], Legal [[Appeal procedure before the European Patent Office|Board of Appeal]] 3.1.1 of the European Patent Office. Published in [[Official Journal of the European Patent Office|OJ]] 8/1992, 402.</ref> 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.<ref>{{EPC Article|86|4}}</ref> 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.<ref>{{EPC Article|39}}</ref>

===Italy===
In a widely criticised move the [[Parliament of Italy|Italian Parliament]] approved the cancellation of all maintenance fees due for Italian patents (including [[European Patent Convention|European patent]]s validated in [[Italy]]), [[utility model]]s and [[industrial design|design]]s, as from January 1, 2006.<ref>{{Cite web
|url=http://www.sib.it/engsib/novita/pat/221205.htm
|publisher= Società Italiana Brevetti
|title=Official fees cancelled for patents, utility models and designs in Italy as from 1 January 2006
|date=2005-12-22
|accessdate=2006-08-10}}</ref> Although the fees were reintroduced on January 2, 2007,<ref>{{Cite web
|url=http://www.sib.it/engsib/novita/pat/110107.htm 
|publisher=Società Italiana Brevetti
|title=Green Light for Reintroduction of Patent, Utility Model and Design Fees
|date=2007-01-11
|accessdate=2007-01-11}}</ref> 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.<ref>{{in lang|it}} Official decision: www.gazzettaufficiale.it,  [http://www.gazzettaufficiale.it/gurifulcrum/dispatcher?service=1&datagu=2007-04-06&task=dettaglio&numgu=81&redaz=07A03050&tmstp=1176216592940 ''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 ...'']{{dead link|date=December 2016 |bot=InternetArchiveBot |fix-attempted=yes }}. Consulted on May 24, 2007.</ref> 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."<ref name="interview">[[Managing Intellectual Property]], ''Fees may rise as EPO stresses quality'' (Interview: Roland Grossenbacher), February 1, 2008</ref>

===Russian Federation===
Patent maintenance fees are due in Russia every year starting with the third year after the application date.<ref>{{cite web | url=https://www.wipo.int/export/sites/www/pct/guide/en/gdvol2/annexes/ru.pdf | title=The PCT Applicant's Guide }}</ref> 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.<ref>{{cite web | url=https://www1.fips.ru/about/tspti-tsentr-podderzhki-tekhnologiy-i-innovatsii/snizhenie-finansovykh-zatrat-.php | title=Снижение финансовых затрат разработчиками при создании и патентовании результатов интеллектуальной деятельности }}</ref> Russian law firms charge substantially larger "payment processing fees" than what [[Rospatent]] charges as patent maintenance fees.<ref>{{cite web | url=https://www.gorodissky.ru/services/podderzhanie-v-sile-patentov-i-svidetelstv/ | title=Поддержание в силе охранных документов }}</ref>{{Failed verification|date=February 2023}}

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 [[International sanctions during the 2022 Russian invasion of Ukraine|sanctions]] imposed by the United States and its allies.<ref>{{cite web | url=https://www.jdsupra.com/legalnews/patents-are-winding-down-in-russia-4011044/ | title=Patents Are Winding Down in Russia }}</ref>

===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.<ref>[http://www.patent.gov.uk/patent/p-manage/p-changerenew/p-changerenew-renew.htm Renewing your patent] {{webarchive |url=https://web.archive.org/web/20061202222835/http://www.patent.gov.uk/patent/p-manage/p-changerenew/p-changerenew-renew.htm |date=December 2, 2006 }} section on UK Patent Office website and [http://www.patent.gov.uk/patentrules1995.pdf Rule 39] {{webarchive |url=https://web.archive.org/web/20070226114247/http://www.patent.gov.uk/patentrules1995.pdf |date=February 26, 2007 }} of the Patents Rules 1995 (as amended)</ref>

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, [http://www.opsi.gov.uk/si/si2005/20052496.htm 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).<ref>{{cite web |title=MPEP Chapter 2500 Maintenance Fees (Rev. 10.2019) |url=https://www.uspto.gov/web/offices/pac/mpep/mpep-2500.pdf |publisher=USPTO |access-date=24 February 2023 |date=June 2020}}</ref><ref>[http://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e301581 35 USC 41(b)(1)]</ref> No maintenance fees are due while an application is pending.<ref>[http://www.uspto.gov/web/offices/ac/qs/ope/fee2009january01_2009may01.htm USPTO FY 2009 FEE SCHEDULE]</ref>

Several adjustments have been approved by the [[United States Congress|Congress]] since: 
* 1980: Public Law 96-517 – Establishes patent renewal (maintenance fees) due at three time periods (stages).
* 1982: Public Law 97-247 – Establishes the patent small entity discount for all fees set by Congress and the Trademark "fence" (Trademark user fees may be used only on trademark related operations).
* 1990: Public Law 101-508 – A 69% surcharge is applied to all patent statutory fees. The agency becomes fully-fee funded.
* 1991: Public Law 102-204 – Establishes yearly adjustments to patent statutory fees based on annual increases to [[consumer price index]].
* 2005: Public Law 108-447 – Establishes the current USPTO fee structure, including separate patent filing, search and examination fees and discounts for trademark applicants who file electronically and agree to other terms.
* 2011: Public Law 112-29 (America Invents Act) – Establishes USPTO's authority to set most patent and trademark fees such that aggregate revenue from the fee schedule recovers aggregate costs. Establishes additional small entity fees and new micro entity fees.

[[Design patent]]s and [[Plant breeders' rights|plant patents]] are not subject to maintenance fees at all.<ref>{{cite web|url=http://www.uspto.gov/web/offices/pac/mpep/documents/2500_2504.htm#sect2504 |title=§ 2504: Patents Subject to Maintenance Fees |website=[[Manual of Patent Examining Procedure]] |publisher=United States Patent and Trademark Office |date=2008-12-18 |accessdate=2009-04-13}}</ref>

Maintenance fees may not be paid in advance;<ref>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 [[United States Secretary of Labor|Secretary of Labor]].  MPEP § 2506.</ref> 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.<ref>37 C.F.R. § 1.362; MPEP §§ 2501, 2504.</ref> 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.<ref>37 C.F.R. § 1.378; MPEP § 2590.</ref>

The data released by the USPTO in 2023<ref>{{Cite web |date=2023 |title=Agency Financial Report |url=https://www.uspto.gov/sites/default/files/documents/USPTOFY23AFR.pdf |website=USPTO}}</ref> 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%.

== References ==
{{reflist|30em}}

==External links==
* [https://fees.uspto.gov/MaintenanceFees Patent Maintenance Fees database], U.S. Patent and Trademark Office

[[Category:Patent law]]
[[Category:Legal costs]]