Maintenance of a patent
A recurring fee must be paid to the granting (authority) body for virtually every patent right that is applied for or granted. This payment, known as the annual fee or maintenance fee, must be paid on time.
Maintenance of a patent by Arnold & Siedsma
Arnold & Siedsma will arrange the payment of the annual fees in all countries of the world. The annual payment also often leads to a commercial assessment of whether the payment should be continued. Arnold & Siedsma can help you to carry out this assessment, in which the scope of protection and commercial benefit are weighed up against the payment of the official fee concerned.
Below you will find an overview of the most asked questions regarding maintenance of a patent.
1) What do we mean with patent right(s)?
The term patent right(s) includes both a submitted patent application and a granted patent.
2) What is a patent?
A patent is part of intellectual property law (IP). A patent protects inventions and gives the applicant (as the only one) the opportunity to exploit and protect the invention. A patent is an exclusive right.
3) What is a patent application?
A patent application is submitted to an (inter)national patent office as a request for a granted patent. A patent application is a clear and complete description and explanation of the invention. The conclusions or claims of the patent application are short, concise and are the basis for the scope of protection. A granted patent application results in a patent.
4) What is the lifetime of a patent?
A patent protects the invention for a maximum of twenty years on the condition that the protection is extended or maintained. In order to extend or maintain a patent annual maintenance fee must be paid.
5) What are maintenance fees?
Maintenance fees are the annual contributions that must be paid in order to extend or maintain the patent right. If for a patent right the mandatory maintenance fees are paid, the patent rights remain valid. Failure to pay the maintenance fees will result in the lapse of the patent right.
6) How frequently should maintenance fees be paid?
The frequency of payment of the maintenance fees depends on (inter)national law and can differ from country to country. For most countries maintenance fees must be paid annually, however e.g. for USA it is not annually but every 3,5 years.
7) From which moment maintenance fees must be paid for patent right(s)?
For some countries this is immediately after submission of the application, for some countries only two or three years after submission of the application and for some countries this is even only after grant of the patent application. The maintenance fees for the years in between the submission of the application and the grant of the application are then paid all at once as accumulated annuities within a certain period (national law) after the official grant notice is received. Your A&S advisor can inform you accordingly.
8) Request for payment/invoice received from a another (foreign) company? (Fake or ghost invoices)
If you instruct Arnold & Siedsma to monitor the maintenance fees of your patent rights, you should never pay maintenance fee related invoices/payment requests to foreign parties. In case of doubt, we advise you to check the received communication with your regular contact person or through email@example.com. We can verify whether this is a fake invoice and advise you how to proceed. From the moment your patent right is published and thus visible in public registers, you can expect these fake or ghost invoices.
9) What is the due date for payment of the maintenance fees?
The due date for payment of the maintenance fees is determined by (inter)national law and is in accordance with the date of filing or the date of grant of the patent right.
10) Where should maintenance fees be paid?
The maintenance fees should be paid by (inter)national patent offices.
11) Why do I receive an annual overview?
Every year we send you an overview of your patent portfolio including the expected costs for the maintenance fees for that respective year. The annual overview encloses the patent right(s) which qualifies to be extended or maintained the upcoming year. This gives you the opportunity to discuss the content of your patent portfolio with your A&S advisor.
12) Why is the amount of my invoice different from my annual overview?
The costs as presented in the annual overview are an estimation and can fluctuate due to currency differences or changes in official fees. In addition, it can happen that patent rights not yet granted are not enclosed in the annual overview upon sending. When these patents are granted in the respective year or new applications are additionally submitted, maintenance fees should still be paid. We will inform you accordingly well in time through our renewal notifications.
13) Why do I receive a renewal notification?
We send you a notification with an overview of the maintenance fee costs to be expected for the month in which the due date for that maintenance fee occurs. This renewal notification gives you the opportunity to determine which patent rights you wish to extend or maintain. Upon receipt of your maintain or lapse instructions well in time (within two weeks after receipt of the renewal notification) you receive our correct invoice stating only the costs for the patent right(s) you wish to maintain.
14) What if the maintenance fee is not paid in time?
When maintenance fees are not paid in time (before the due date) your patent right will lapse. This type of lapse is not irrevocable. You can still pay the maintenance fee with a surcharge within a limited period to prevent irrevocable lapse of your patent right(s). For all your questions in relation to extended terms and the corresponding amount of the surcharges, please contact your A&S advisor.
15) Why do I pay surcharge?
Your patent right lapsed because maintenance fees were not paid in time (before the due date). After the due date maintenance fees can only be paid with a surcharge determined by (inter)national patent offices within a limited period to prevent irrevocable lapse of your patent right(s). When the maintenance fee with the surcharge is not paid in time, the patent right will irrevocably lapse.