The next topic I’ll cover in our “Monitoring Patent Costs” series will be patent annuity or maintenance fees. Often times, applicants are unaware of these fees for “maintaining” a patent, and depending on the issuing jurisdiction and the age of the patent, these fees can be fairly significant.
Not all countries charge maintenance fees, but for those that do, the frequency and amount of the fee is set by the patent office’s fee schedule. Some countries have maintenance fees due every year, while fees for other countries come up less frequently. For example, the maintenance fees for a US patent are due 3 ½, 7 ½, and 11 ½ years after grant of the patent.
Annuity fees also escalate as the patent ages, so longer patent protection will cost more for the patent holder. Chinese annuity fees range from 900 RMB for the first year to 8000 RMB for the 20th year. Of course, the patentee can abandon the patent at any time by not paying the fee.
One common and unpleasant surprise for many applicants is that certain countries or regions have maintenance fees that kick in while the application is still pending, rather than after the patent has been granted. For European applications, the first annuity is due 2 years after the filing of the PCT application. This means that this fee can come due soon after the regional phase filing into Europe, and often catches applicants off-guard.
So what happens if you miss an annuity fee? As I mentioned, payment of these fees is required to keep the patent valid. Luckily, most, if not all, jurisdictions have grace periods for payment, and often require an additional fee on top of the missed annuity. Best strategy is to make sure to monitor these deadlines closely, because having a patent lapse can be catastrophic.
See below for links to other articles I’ve written for this series: