When are patent renewal fees payable?

This is one of my favourites.  The first renewal fee you pay for a European application is the third renewal fee, which is paid at the second anniversary.  How can that be?

It’s actually quite simple. Renewal fees are due annually, and in most countries they are payable on the anniversary of the filing date.  Sometimes they are payable shortly afterwards – such as at the end of the month that contains the anniversary.  So far, so simple.  The complication arises when working out which fee is payable, and when.

This is important, as the fees vary with the age of the patent.  The early renewal fees are quite low, but the rise with time.  For example, the UK renewal fees start at £70 and rise to £600 (at 2010 rates).  So it is important to select the right one – send the fee for a previous year and you will not have paid a sufficient amount. 

The confusion over the numbering arises because fees are paid in advance, i.e. at the start of the year for which they are due.  Thus, if there were a “first” renewal fee, it would be for the first year of the patent’s life, and thus due immediately on filing, or the “0th” anniversary.  Likewise, the 5th renewal fee is due on the 4th anniversary, the 6th fee on the 5th anniversary, and so on.  The process ends with the 20th renewal fee, which is due on the 19th anniversary and takes you through to the end of the patent’s life when it expires on the 20th anniversary of the filing date.

The other point to note is the stage at which renewal fees start being payable.  Most countries only charge renewal fees once the patent is granted.  Thus, the UK Intellectual Property Office sets out renewal fees for the 5th to the 20th years, payable on the 4th to the 19th anniversaries because most applications take about 4 years to get to grant.  Generally, when an application is granted, any renewal fees that have already fallen due have to be paid in a “catch-up” process.  Sometimes this is due on grant, sometimes within a set period after grant. 

The European and the Canadian patent offices charge renewal fees on pending applications as well, starting with the 3th year’s fee.  In the case of the European Patent Office, you stop paying renewal fees to the EPO when the patent is granted, and start paying them (instead) to the national offices where the European patent takes efect.  Sometimes, care is needed around the handover date to make sure nothing is missed. 

So, that is how the first renewal fee you pay is the third, at the second year!

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