inovia doesn’t directly manage payment of patent annuities (unless they’re due at national phase entry), but the topic comes up frequently with clients who use our foreign filing platform to validate their European patents.
Before a European patent application is granted, renewal fees are paid to the EPO to keep the application pending. A renewal fee is initially payable at the end of the month within which the two-year anniversary of the original filing date falls, and then annually on the same date while the European application is pending.
For PCT cases, the “original filing date” is the PCT international filing date (note: this is not the date the application entered the European regional phase). Note, however, that if the deadline falls before the 31 month deadline, it is automatically extended to that date without penalty. This will happen if there was no priority document, or the PCT application was lodged only a few months after the earliest priority document.
For non-PCT cases (i.e. those filed directly into Europe), the original filing date is the date that the European application was filed.
In both cases, the priority date is not relevant to calculating when the annuity falls due.
After grant of the European patent is published, annuities continue to be paid directly to the individual patent offices within which the European patent is to be validated / maintained. However, every country offers a grace period of at least two months from the grant publication date within which the annuity can be paid without additional charge.
Somewhat annoyingly, this leaves a period of one month leading up to the validation deadline within which the annuities deadline might fall. However, even if the two month grace period is missed, all EP countries allow the annuity to be paid up to six months after the deadline upon payment of a surcharge. The government fee component of the surcharge is usually something like 20-50% of the original annuity. Some European agents might charge a bit more to pay the annuity if it’s been missed than if it was paid in time, but again, the difference isn’t usually much.
What does this mean for inovia clients? Simple: not much! Our clients (whether patent firms or applicants) can generally continue doing exactly what they currently do, unless using us is part of a much more significant change to their foreign filing practices. If that’s the case, we can explain the options to you in more detail.
If you need any more information about this issue, please don’t hesitate to contact us.