Renewal fees (annuities)

In industrial property, an annuity is the yearly fee that the holder of a patent pays to keep the title in force. Other titles follow a similar logic, but over longer periods. A trade mark is renewed every ten years, without limit. Designs are renewed in five year periods, up to twenty-five years.

The role of annuities

Payment of the annuities keeps the patent in force for the whole legal term of protection, that is at most twenty years from filing. Conversely, non-payment entails the loss of the right. When the holder stops paying, the invention covered by the patent falls into the public domain. Anyone may then exploit it freely.

Payment in practice

In France, the holder pays each annuity at the latest on the last day of the anniversary month of the filing. The deadlines must therefore be tracked rigorously. The rules and amounts vary from one country to another. They also depend on the age of the title and the type of right. The holder must therefore verify the applicable rules in each country where protection exists.

Grace period, lapse and re-establishment

Failure to pay by the due date does not immediately entail the loss of the title. The holder has a six month grace period to regularise, with a surcharge. On expiry of that period, lapse occurs by operation of law (Article L. 613-22 of the French Intellectual Property Code), the payment of yearly fees being provided for by Article L. 612-19 of the same code. Re-establishment remains possible where the failure to meet the deadline is justified by a legitimate excuse, under the conditions of Article L. 612-16.

European patents and the unitary patent

While the European application is pending, the yearly fees are paid to the European Patent Office from the third year (Article 86 of the European Patent Convention). After grant, the classic European patent becomes a bundle of national titles and the annuities are paid country by country. The unitary patent escapes that dispersion: a single yearly fee is paid to the European Patent Office for all participating states.

Key points

Annuities are the main recurring cost of a portfolio and the first lever of arbitration: abandoning a secondary title in certain countries frees a useful budget elsewhere. Monitoring the deadlines, including those of the grace period, calls for proper docketing, because lapse sends the invention into the public domain without any further formality.

This entry focuses on annual patent maintenance payments. The renewal fees entry covers periodic maintenance payments across different IP rights.