Article 5bis of the Paris Convention requires that parties to the
Convention should provide a six-month grace period for paying
maintenance fees:
(1) A period of grace of not less than six months shall be allowed
for the payment of the fees prescribed for the maintenance of
industrial property rights, subject, if the domestic legislation so
provides, to the payment of a surcharge.
(2) The countries of the Union shall have the right to provide for
the restoration of patents which have lapsed by reason of
non–payment of fees.
Patent Cooperation Treaty
International patent applications filed under the Patent Cooperation
Treaty are not subject to the payment of maintenance fees. However,
maintenance fees may fall due to designated/elected national and
regional offices. If renewal fees have become due by the time the
national phase could start, they must be paid before the expiration
of the time limit applicable for entering the national phase.
National and regional legislations
Canada
In Canada, maintenance fees for a patent application, or a patent
issued from the application, is due on each anniversary of the
filing date of the application, beginning on the second anniversary.
The amount due each year escalates during the life of the patent or
patent application.
If the maintenance fee is not paid by the due date with respect to a
patent application, the application is deemed abandoned. The
abandoned application may be reinstated within 12 months of the date
of abandonment, by filing a request for reinstatement with payment
of the maintenance fee that is due and the reinstatement fee.
The maintenance fee for a patent may be paid within a one year grace
period after the due date, with the payment of a late fee. If the
required fee has not been paid when the grace period expires, the
patent lapses. [citation needed]
European Patent Office
Renewal fees are payable to the European Patent Office in respect of
pending European patent applications in respect of the third year
from the date of filing. [3] These fees are paid in advance of the
year in which they are due (such that the renewal fee for the third
year falls due two years from the date of filing) and fall due on
the last day of the month containing the anniversary of the date of
filing. [4]
If the payment of a renewal fee for a European patent application is
not made in due time, the renewal fee may still be validly paid
within 6 months of the due date, provided that the additional fee
provided by Article 86(2) EPC is paid within the 6 months as well.
[5] For the calculation of the 6-month additional period, the
so-called de ultimo ad ultimo rule is applied by the EPO. [6]
According to this rule, the six-month period runs "from the last day
of the month to the last day of the month". [7] For instance, if a
renewal fee was due in February 2004, the additional fee fell due on
August 31, 2004 (Tuesday), i.e. 6 months from the end of February
2004.
The obligation to pay renewal fees terminates 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. [8] Subsequently,
renewal fees are payable to the national offices of the EPC
Contracting States in which the European patent is brought into
effect. Each Contracting State then pays the European Patent
Organisation a proportion of each renewal fee received for a
European patent in that State. [9]
Italy
In a widely criticised move the Italian Parliament approved the
cancellation of all maintenance fees due for Italian patents
(including European patents validated in Italy), utility models and
designs, as from 2006-01-01. Although the fees were reintroduced on
2007-01-02,[11] the actual amounts of the fees were not announced
until 2007-04-06. Consequently, for any fees that fell due between
2007-01-02 and 2007-04-30, the time limit for paying these was
extended to 2007-06-30.
United Kingdom
The United Kingdom does not require renewal fees to be paid in
respect of pending applications but a granted patent must be renewed
on the 4th anniversary of the filing date and every year after that.
Historically, and in contrast to most other European countries and
the European Patent Office, the law in the United Kingdom required
that renewal fees be paid on the anniversary of the filing date
rather than on the last day of the month. The Patents (Amendment)
Rules 2005, which came into effect on 1 October 2005, ensure that
any period prescribed for payment of a renewal fee does not expire
until the end of the month in which the renewal date falls.
United States
Patent maintenance fees in the United States are due 3˝, 7˝ and 11˝
years after grant of the patent. No maintenance fees are due while
an application is pending.
