August 6th, 2019Foreign Patent Filing – annuity fees

What annuity fees are and why you need to pay them.
Authored by David Postolski, Patent Attorney and Partner at Gearhart Law

Filing a patent and then passing examination results in a granted patent.  Once a patent holder has a granted patent certain fees will be due.  Thus, it is important for patent holders to recognize and calculate the expense every country has in order to keep the patent application or granted patent alive.  The US is unique in that it requires patent holders to pay maintenance fees after the patent has granted.  In the US, maintenance fees are similar to taxes in that they are paid in the 3.5, 7.5, and 11.5 years from the date of grant of the patent.  If your patent never grants then you don’t pay maintenance fees in the US. Not paying a maintenance fee on your granted patent will result in the US patent going abandoned and the costs to revive are expensive considering the missed maintenance has to be paid as well.   

In other countries these fees are called patent annuities.  A Patent annuity is the yearly fee that is paid to a foreign patent office to maintain a granted patent or patent application in force. It is also known as renewal fee (or maintenance fee). 

Annuity or patent renewals are paid to the respective patent and trademark offices (PTOs) as per the fees stipulated by the patent law of a country. Certain countries require the payment to be made only by a local patent attorney or agent, e.g., China, Korea, Japan, etc.

Some countries require the payment of fees for pending patent applications and other countries only after the patent is granted or issued (like the US). Payment of a renewal fee may still be validly made up to six months (commonly referred to as the surcharge period) in a few countries from the ultimate deadline, provided that an additional fee equal to 50% of the belated renewal fee is paid within the same period. Failure to pay a renewal fee by the end of the surcharge period will result in the application/patent lapsing. In certain circumstances, it is possible to restore the right in a few countries and usually requires evidence explaining why nonpayment of the renewal fees occurred.    Official fees for annuities and renewal fees can range from $200-$2000 per year per country.  The longer a patent holder wants to keep their  patent is in force the higher the official fee is per year per country.   GL and the foreign agents we use will also charge a flat fee per payment, per year and per country. For more information please contact David Postolski at david@gearhartlaw.com.  See our next blog for the unique attributes of European Union Patent Annuity and Validation Process. 

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