Most companies or individuals who have obtained patents, designs or trade marks, will have spent both time and money establishing those rights. It is therefore essential that they do not lose those rights by not renewing them at the correct time and with the relevant authorities. For example, in the UK, the relevant authority is the UK Intellectual Property Office (IPO).
The Authority in the relevant country will charge fees for you to renew your rights and keep them in force. The fees and timeframes for renewal do vary according to the type of intellectual property you own and the jurisdiction in which you wish to renew them, so it is very important to make sure you monitor those deadlines and pay the correct fees on time, or you can risk losing you rights permanently. Some authorities issue non-payment notices to advise when a renewal has not been paid successfully for any reason, but many do not. In addition, it is sometimes necessary to have an agent in the local country in order to be able to attend to the payment of the fees. This is the reason why many people choose to appoint a representative who can monitor the various deadlines and costs and remind them as soon as payments for renewals fall due. This way they do not have to worry about missing or overlooking a deadline.
An EU law recently which indicates that the onus for renewing always lies with the proprietor. This means that it is important to keep a record of the deadline so that you can show all due care was taken:
• Patents – Renewal fees become payable on the 4th Anniversary of when the patent was filed and then every year after that (near the anniversary due date) for up to 20 years. Renewal fees are paid for the year in advance, so you are paying the 5th year renewal fee on the 4th anniversary of the patent. If the patent has not been granted by the time the 5th year renewal fee falls due, you are given a window of 3 months from grant to attend to any back renewal fees which should have been paid whilst the patent is still pending.
• Designs – Renewal fees are due on the 5th year from registration and every 5 years up to a maximum of 25 years.
• Trade marks – Renewal fees are due every 10 years from the filing date. Trade marks can be renewed indefinitely whilst the mark is being used and unless successfully opposed.
You can handle renewals yourself and indeed many countries, including the UK will allow you to pay and renew online. The risk is that you bear all of the responsibility for making the payment on time and for the correct amount. However, if a deadline is missed, it is costly and is not always possible to apply to restore your rights. If restoration is applied for it is essential that you show all due care was taken and a standard procedure followed for restoration to even be considered.
This is where we can help
Many people choose the alternative, which is to use an Intellectual Property company or a specialist renewals company, like us, who can handle the renewals on their behalf. If appointed as your representative, we are responsible for reminding you of deadline dates, including costs. We can only act on your instructions but as IP Specialists, we are regulated, which should give you peace of mind.
The true cost of a Renewal service
The key thing to bear in mind when appointing a representative for your renewals, is that all companies will charge a fee for their service, there may also be charges for renewing in some countries where an agent needs to be appointed and that there are likely to be exchange rate charges if you wish to be invoiced in your home currency.
Whichever route you decide to take with renewing your patents, designs or trade marks, Pure Ideas always welcomes initial enquiries and can support you in making the appropriate commercial decision for your business. We have a team of formalities specialists with years of experience in their field, so you can be assured that we can guide you through the process.
Disclamer: This document is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Pure Ideas for advice before taking any action in reliance on it.