Everything about annuities

 

The term of the European patent is 20 years from the date of filing of the application. Provided that the annual renewal fees are duly paid, patents remain in force for the maximum term. 

Thus, the annuity fees (other known as renewal or maintenance fees) must be paid –generally on an annual basis– to maintain the validity of the patent. Most patent offices collect renewal fees even before a patent is granted.

The US patent office (USPTO) is an important exception. In the US, there are only three maintenance fees payable: 3.5, 7.5 and 11.5 years after the date of grant. Other countries, where no maintenance fees are payable during prosecution are for example China, Japan, the United Kingdom and Mexico. In these countries, you only have to start paying the renewal fees after grant.

If you filed a PCT application, you don't have to pay annuity fees during the international phase (in the first 2.5 years).

European patent

Now, let's discuss the annuities regarding Europe. During the European patent procedure you have to pay renewal fees even before the patent is granted. Moreover, the rules of payment are different before and after grant.

1. Before grant:

You have to first pay maintenance fee for the 3rd year, which is due on the second anniversary of the filing date. (They always have to be paid in advance for the coming year.)* The fees to be paid increase year by year. You can find the exact amounts of the annuity fees payable to the EPO here.

Due date: A renewal fee for the European patent application in respect of the coming year shall be due on the last day of the month containing the anniversary of the date of filing of the European patent application.** You may pay a renewal fee 3 months before it falls due.

So, if your filing date is 3 September, the due date is 30 September. If your filing date is 31 May, the due date is 31 May.

Remedy: If a renewal fee is not paid on the due date, the fee may still be paid within six months of the said date, but an additional fee (50% of the renewal fee) must also be paid within that period.**

Consequence of non-payment of a European annuity: If a renewal fee is not paid in due time, the application is deemed to be withdrawn.*

2. After grant:

After the European patent is granted, you have to pay the fees directly to the national patent offices where the patent is validated, since the competence is transferred to the contracting states after grant.***

If you validated your patent in 10 countries, you will have to pay 10 annuity fees each year (if you would like to keep your patent alive).

Due date: The due date is defined differently in the Contracting States. In most countries, just like in the EPC, the due date is the last day of the month containing the date of filing of the application. Other states use the anniversary of the filing date as the due date. So, it is very important that you always check the national patent law or ask a patent attorney's help, since the deadline for paying the renewal fees is different in all countries.

You can find information about the due dates and fees on the EPO's website: https://new.epo.org/en/legal/national-law/2022/index.html

Good news: almost everywhere in Europe, there is an additional period of 6 months after the due date to pay the renewal fees with a surcharge.

 

* This is defined in Art. 86 EPC:
”(1) Renewal fees for the European patent application shall be paid to the European Patent Office in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. If a renewal fee is not paid in due time, the application shall be deemed to be withdrawn.
(2) The obligation to pay renewal fees shall terminate 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 in the European Patent Bulletin.”
See the full legal text here.

** This is defined in Rule 51 EPC:
”(1) A renewal fee for the European patent application in respect of the coming year shall be due on the last day of the month containing the anniversary of the date of filing of the European patent application. […]
(2) If a renewal fee is not paid on the due date under paragraph 1, the fee may still be paid within six months of the said date, provided that an additional fee is also paid within that period. […]
See the full legal text here.

*** This is defined in Art. 141 EPC:
”(1) Renewal fees for a European patent may only be imposed for the years which follow that referred to in Article 86, paragraph 2.”
See the full legal text here.

 

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023

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