UK Patent Renewals, Fees and Deadlines

Introduction:

In order to keep a patent in force, renewal fees must be paid annually at the UK Intellectual Property Office (‘UKIPO’).

The renewal fee for a UK patent application is due after grant only, and on the fourth anniversary from the filing date (for the fifth year) and annually thereafter. Renewal fees would be due every year until the 19^th anniversary from the filing date, for the twentieth year. Hence, you can renew your patent for up to a maximum of 20 years.

This article aims to shed light on renewal fees for UK patents and how complexities can arise when renewal fees are missed – the consequences and what, if anything, can be done to restore the patent.

Who can pay:

Anyone may pay the renewal fee meaning that it does not have to be paid by the proprietor or applicant only. This is particularly useful as the proprietor may have an agreement with a licensee to pay the renewal fee, or the proprietor’s patent portfolio may be handled by a third party that may be responsible for paying the renewal fees.

How to pay:

You can renew your GB patent or European patent (UK) online – here. You can also renew by post or over the phone [1].

5th year (on 4th year anniversary)	£70
6th year (on 5th year anniversary…etc)	£90
7th year	£110
8th year	£130
9th year	£150
10th year	£170
11th year	£190
12th year	£220
13th year	£260
14th year	£300
15th year	£360
16th year	£420
17th year	£470
18th year	£520
19th year	£570
20th year (…on 19th year anniversary)	£610

Renewal Fee Deadline:

The deadline for paying the renewal fee is by the end of the month in which the renewal date (anniversary date) falls due. If the renewal fee is not paid, then the patent lapses at the renewal date. The UKIPO will then send a reminder to the registered address for service.

When renewing your patent online, you can request the UKIPO to email a reminder 3 months before the next renewal fee is due. The proprietor may intentionally decide to allow the patent to lapse and to not pay the renewal fee. In other instances, the renewal fee may be missed unintentionally.

Renewal Period:

The renewal period is the period within which the renewal fee can be paid. The renewal period is 3 full months prior to the end of the month in which the renewal date falls. For example, if the renewal date is 17 July, then the renewal fee is due by 31 July, and the renewal period starts from 1 May and ends on 31 July.

Adjustment for patents granted after 3 years 9 months:

If a patent is granted after 3 years and 9 months from the filing date, then the first renewal fee (for the fifth year) is due by the end of the third month after grant. In the following year, the renewal fee is due by the end of the month of the anniversary of the filing date – so the renewal process, initially adjusted due to the grant process, returns to its usual annual cycle. Hence, the initial renewal period is adjusted.

It may be that you have to pay multiple fees that cover more than one renewal year when the first renewal fee is due, after grant; e.g., if the patent is granted after the 5th year anniversary, then the renewal fees for both the 5th and 6th years would already be due. Both payments are payable by the end of the third month after grant.

Grace period:

If the renewal fee is not paid by the end of the renewal period, then there is a 6-month grace period within which the renewal fee can still be paid with a late payment fee. Currently, the late payment fee is £24. The late payment fee is due in addition to the renewal fee(s) which were missed and are due.

The grace period ends at the end of the 6^th month after the renewal period. For example, if the renewal date is 17 July 2023, (the renewal period is from 1 May 2023 to 31 July 2023), then the grace period would end 6-months after, i.e., on 31 January 2024.

If the renewal fee is paid within the 6-month grace period with the late payment fee then it is as if the patent never lapsed, and it remains in force. However, if an infringement of the patent occurs within the grace period, then damages may be discretionary.

Restoration:

If the renewal fee is not paid by the end of the 6-month grace period, then the patent lapses. The applicant may have the option of restoring the patent if they can show that failure to pay the renewal fee was unintentional. The applicant must provide evidence to support this.

The restoration period is 13 months after the end of the grace period. In the above-mentioned example, the grace period ended on 31 January 2024, and the 13-month restoration period would end on 28 February 2025.

If the patent is successfully restored, the Comptroller may issue a 2-month deadline within which the renewal fee has to be paid. If your application to restore the patent is rejected, you can request a hearing at the UKIPO.

Third party rights:

If after the 6-month grace period and before any notification of intention to restore the patent is published, a third party may make serious and effective preparations in good faith to perform an act that would otherwise be considered an infringement of the patent.

In this case, the third party may have the right to continue the otherwise act – known as a third party right – without being liable for damages – if it can show serious and effective preparations were made in good faith.

In such a case, the third party would only be allowed to continue the same act only, and would not be able to license the right to another party, but may only assign it to relevant parts of its business.

Conclusion:

It is safer to avoid unnecessary complications, by ensuring that renewal fees are paid on time. However, there are several options as detailed in this article, that may be invaluable if the renewal fee payment is inadvertently missed.

R is for renewal fees – and ensuring that they are paid on time!

References:

[1] Renew a patent – https://www.gov.uk/renew-patent