Patent Tech Note: Renewal Fees

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 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.

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 for by the proprietor or applicant. 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.

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 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 is from 1 May to 31 July.

Adjustment due to grant:

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.

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. The grace period ends at the end of the 6^th month. For example, if the renewal date is 17 July 2023 and the renewal period is from 1 May 2023 to 31 July 2023, the grace period ends 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. So, in the above-mentioned example, the restoration period would be until 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.

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.

Such a third party right would enable the third party to continue the same act only, and the third party would not be able to license the right but only to assign the right to relevant parts of the business.

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