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Patent Maintenance Fees

Maintenance of Patent Applications in Canada

According to the Patent Act and Patent Rules, an applicant who files a Canadian patent application must pay maintenance fees to maintain the application.

Maintenance fees must be paid for each one-year period from the second anniversary of the filing date of the patent application to the nineteenth anniversary and must be paid before the first day of the one-year period covered by the maintenance fee. If a maintenance fee due date has passed and no payment has been received, the Commissioner of patents will provide notice of the missed payment and permit payment of the maintenance fee, along with a $150 CAD (as of 2023) late fee, within the later of 6 months of the due date or 2 months of the date of notice. If the maintenance fee is not paid within the grace period, the application will be deemed abandoned or, if the patent has already been granted, the patent will be deemed expired. It is important to note that the time limits for payment of patent application maintenance fees cannot be extended.

For divisional patent applications, maintenance fees are calculated from the filing date of the parent patent application and are payable upon the presentation date of the divisional patent application.

Maintenance fees in national phase applications originating from PCT applications are calculated based on the filing date of the PCT application.

Abandonment and Reinstatement

If a maintenance fee is not paid on time or within the grace period, the patent application will become abandoned. The patent application may, however, be reinstated if 1) a request for reinstatement is made; 2) the maintenance fee payment is made; 3) a prescribed reinstatement fee of $210.51 CAD in 2023 and a $150 CAD late fee are paid; and 4) the applicant demonstrates that they took due care in complying with Patent Office requirements. The fourth requirement is relatively new. It requires that the Patent Office, prior to reinstating the application, determine that the failure to pay the maintenance fee occurred despite the due care required in the circumstances having been taken. In other words, the patent office is cutting back on its leniency toward applicants who simply fail to be reasonably conscious of and attentive to the deadlines affecting their application.

The Canadian Intellectual Property Office has suggested some circumstances which may favour a determination that the due care required was not taken. These circumstances include where an applicant claims they lacked the funds required, where a human error resulted from a lack of organization or diligence, where an applicant failed to take action due to a lack of knowledge of the Patent Act and Patent Rules, or where someone failed to take action because the deadline fell on a day they had a vacation or appointment. Note that an applicant has 12 months from the date the application went abandoned to take the required actions to reinstate the application.

Finally, note that it is possible for a patent application to become multiply abandoned; for example, if there is also an examiner's requisition which is not responded to by its deadline. In those cases, multiple reinstatement fees need to be paid and all causes of abandonment need to be remedied before the patent application will be reinstated.

Standard and Small Entity Fees

Standard maintenance fee payments are (as of 2023): $100 CAD annually between the second and fourth anniversaries; $210.51 CAD annually between the fifth and ninth anniversaries; $263.14 CAD annually between the tenth and fourteenth anniversaries; and $473.65 CAD annually between the fifteenth and nineteenth anniversaries.

If an applicant qualifies as a small entity, the annual maintenance fees will be reduced.

As defined in subsection 3.01(3) of the Patent Rules, a small entity is "an entity that employs 50 or fewer employees or that is a university, but does not include any entity that a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees."

Small entity fee payments are (as of 2023): $50 CAD annually between the second and fourth anniversaries; $100 CAD annually between the fifth and ninth anniversaries; $125 CAD annually between the tenth and fourteenth anniversaries; and $236.83 CAD annually between the fifteenth and nineteenth anniversaries.

Who Can Make Maintenance Fee Payments?

Any of the applicants or anyone authorized by any of the applicants such as their Canadian patent agent may validly make maintenance fee payments. Accepted forms of payment include debit cards, credit cards, deposit accounts, online banking services, cheques or money orders, or wire transfer. All fees must be paid in Canadian dollars.

Can Maintenance Fees Be Paid for Two or More Years in a Single Payment?

Yes. This strategy may also reduce the patent agent fees incurred for payment of maintenance fees over the lifetime of the patent application and patent.

Maintenance of Patents in Canada

According to the Patent Act and Patent Rules, a patentee must pay maintenance fees for prescribed periods to maintain the rights accorded to it by a patent. If maintenance fees were paid for the maintenance of a corresponding patent application, maintenance fees for the maintenance of a patent will not be payable for the same period.

Standard and Small Entity Fees

The standard and small entity maintenance fees are the same for the maintenance of patents as they are for the maintenance of patent applications.

Reissue Patents

Maintenance fees for reissue patents are due at the same times and for the same periods as the original patent for the unexpired term of the original patent. If maintenance fees were paid for the maintenance of the original patent or the application of the original patent, a maintenance fee is not payable to maintain the rights accorded to a reissue patent for the same period.

Due Dates

Maintenance fees for patents are due on the same payment schedule as for patent applications as described above until the last payment is made before the nineteenth anniversary of the filing date. The grace period for late payment of maintenance fees similarly runs from the later of 6 months after the due date or 2 months of the date of notice. Once again, it is important to note that the time limits for payment of patent maintenance fees cannot be extended.

If a maintenance fee is not paid on or before the end of the grace period, the patent will be deemed to be in an about-to-lapse state. A patent or reissued patent in an about-to-lapse state will lapse if the maintenance and late payment fees are not paid within one year following the end of the grace period accompanied by acceptable reasons that demonstrate the failure occurred in spite of due care. A patent that has lapsed cannot be revived.

Who Can Make Maintenance Fee Payments?

Akin to patent applications, maintenance fees for patents can be paid by either the patentee or by any person acting for the patentee, such as an authorized correspondent, owner, or inventor.

Maintenance of Patents in the United States

According to the United States Patent and Trademark Office (USPTO) Patent Rules, a patent owner must pay maintenance fees for prescribed periods to maintain the rights accorded to it by a patent. No maintenance fees are required to be paid in United States patent applications, or in granted design patents.

Due Dates

Maintenance fees are due at three points during the lifetime of a United States patent, namely at 3.5, 7.5, and 11.5 years after the date of the original grant of a patent. There is a six-month grace period following these due dates, during which the maintenance fee can be paid along with a surcharge to maintain the U.S. patent grant. These late fees are (as of 2023) $500 USD for a standard entity, $200 USD for a small entity, and $100 USD for a micro entity. If a maintenance fee and any applicable surcharges are not paid, patent protection lapses and the rights provided by the patent are no longer enforceable.

Standard, Small, and Micro Entity Maintenance Fees

Patent maintenance fee payment amounts are set out in the USPTO fee schedule. Standard maintenance fee payments are (as of 2023): $2000 USD due at 3.5 years after the original grant; $3760 USD due at 7.5 years after the original grant; and $7700 USD due at 11.5 years after the original grant.

If an applicant qualifies as a small entity, the annual maintenance fees will be reduced.

As defined in 37 CFR 1.27 of the USPTO Manual of Patent Examining Procedure, a small entity is an individual inventor, a university, a non-profit, or a small business concern with less than 500 employees and who has not assigned their patent interest to an entity who does not qualify as a small entity.

Small entity maintenance fee payments are (as of 2023): $ 800 USD due at 3.5 years after the original grant; $ 1504 USD due at 7.5 years after the original grant; and $ 3080 USD due at 11.5 years after the original grant.

If an applicant qualifies as a micro entity, the annual maintenance fees will be further reduced.

As defined in 35 USC 123 of the USPTO Manual of Patent Examining Procedure, a micro entity is an entity that qualifies as a small entity and has not been named as an inventor on more than four previously filed applications, did not have a gross income exceeding three times the medium household income for the preceding calendar year, and has not assigned their patent interest to an entity whose gross income exceeded three times the medium household income for the preceding calendar year. The median household income for the purposes of qualification as a micro-entity can be viewed on the USPTO website.

Micro entity maintenance fee payments are (as of 2023): $400 USD due at 3.5 years after the original grant; $752 USD due at 7.5 years after the original grant; and $1540 USD due at 11.5 years after the original grant.

Who Can Make Maintenance Fee Payments?

Maintenance fees and any necessary surcharges may be paid by the patentee or by any person or organization on behalf of a patentee, such as an authorized correspondent, owner or inventor.

Renewal of Patent Applications in European Patent Convention Member States

According to the European Patent Convention, renewal fees for European patent applications must be paid to the European Patent Office (EPO). A single patent application filed with the EPO is eligible for patent protection in each member state. The member states of the European Patent Convention include: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Montenegro, North Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom.

Due Dates

Renewal fees are due on the last day of the month that contains the anniversary of the filing date of the application and are due in respect of the third year and each subsequent year, calculated from the filing date of the application. Renewal fees can only be paid within the three months preceding their due date, except for the renewal fee in respect of the third year, which may be paid up to six months before it is due. If a renewal fee is not paid by a due date, there is a six-month grace period during which the renewal fee can be paid along with an additional late fee equal to 50% of the belated renewal fee. If a renewal fee is not paid by the expiry of the grace period, the patent application will be deemed withdrawn. If this occurs, it may be possible to restore rights by making a request to reestablish rights.

Renewal Fees

Renewal fees for patent applications filed with the EPO are: € 505 for the 3rd year, €630 for the 4th year, €880 for the 5th year, €1125 for the 6th year, €1245 for the 7th year, €1370 for the 8th year, €1495 for the 9th year, and € 1690 for the 10th and each subsequent year.

Who Can Make Renewal Fee Payments?

Any of the applicants or anyone authorized by any of the applicants is permitted to make renewal fee payments for EPO patent applications.

Renewal of Patents in European Patent Convention Member States

Note that the foregoing applies to patent applications pre-grant. Renewal fees are paid to the EPO only up to and including the year in which the mention of the grant of the patent is published. After that, renewal fees are payable to the individual intellectual property offices in the states designated in the patent.

Maintenance of Patents in China

According to the Patent Law of the People’s Republic of China and the Implementing Regulations prescribed thereunder, annual fees must be paid to the China National Intellectual Property Administration (CNIPA) to maintain the rights accorded by a granted patent.

Due Dates

The first annual fee must be paid within two months of receipt of notice from the CNIPA of a patent grant. Subsequent annual fees must be paid in advance and within the month prior to the anniversary of the filing date.

If an annual fee is not paid or if it is not paid in full by the anniversary of the filing date, the CNIPA will invite the applicant to pay the outstanding amount and an additional surcharge within the following six months. The amount of the surcharge is, for each month of late payment, 5% of the total amount of the annual fee for the year within which the fee was to be paid.

If the outstanding fee and the surcharge are not paid within the six months following the anniversary of the filing date, then the patent shall be deemed to have lapsed from the date upon which this six-month time limit expires. Once lapsed, the patent is no longer enforceable.

Maintenance Fees

The annual fees for maintaining a patent granted by the CNIPA are (as of 2023): 900 CNY annually for the first to third years, 1200 CNY annually for the fourth to sixth years, 2000 CNY annually for the seventh to ninth years, 4000 CNY annually for the tenth to twelfth years, 6000 CNY annually for the thirteenth to fifteenth years, and 8000 CNY annually for the sixteenth to twentieth years. If a patent has not been granted two years after it a patent application’s filing date, then a 300 CNY application maintenance fee must be paid in the third and subsequent years until the patent is granted.

Who Can Make Maintenance Fee Payments?

Maintenance fees and any necessary surcharges must be paid directly or by way of bank or postal remittance to the CNIPA by the applicant, patentee, or by an authorized patent agent from a patent agency legally incorporated in China.

Maintenance of Patents in Japan

According to the Patent Act of Japan and the Patent Regulations prescribed thereunder, annual fees must be paid to the Japan Patent Office (JPO) to maintain a patent right.

Due Dates

Annual fees for the first to third year must all be paid at the same time and within 30 days after receipt of a decision to grant a patent. The annual fees for the fourth and subsequent years must be paid before the end of the previous year. However, payment of an outstanding fee can still be made, together with a late payment surcharge equal to 100% of the annual fee, within the six months following a deadline. If payment is not made within this six-month grace period, the patent right will be deemed to have expired. If there is a justifiable reason for not paying the outstanding fee and surcharge within the six-month grace period, a Statement of Reasons for Restoration can be submitted to the JPO. This Statement must be submitted along with the outstanding annual fee and surcharge within two months after the date on which the justifiable reason ceased to exist and no later than one year after the six-month grace period expired.

Maintenance Fees

The annual fees for maintaining a patent granted by the JPO are (as of 2023): 4300 JPY plus 300 JPY per claim per year for the first to third years, 10300 JPY plus 800 JPY per claim annually for the fourth to sixth years, 24,800 JPY plus 1900 JPY per claim annually for the seventh to ninth years, and 59,400 JPY plus 4600 JPY per claim annually for the tenth to twenty-fifth years. Patents for pharmaceutical products and agricultural chemicals that have received an extended period of protection are subject to annual fees of 59,400 JPY plus 4600 JPY per claim annually for the twenty-first to twenty-fifth years.

The JPO may also discount annual fees for the first to tenth years by 50% to 75% for qualifying small and medium enterprises. While several discount categories exist, whether a business qualifies or not is largely determined by the number of employees, total capital, or whether the business is a recipient of public assistance or operates substantially in research and development.

Who Can Make Maintenance Fee Payments?

Maintenance fees and any necessary surcharges may be paid directly to the JPO by non-resident patent-right holders or by any authorized patent attorney, attorney-at-law, other person resident in Japan, or firm registered to practice before the JPO.

Maintenance of Patents in Korea

According to the Patent Law of the Republic of Korea and the Enforcement Regulations prescribed thereunder, annual fees must be paid to the Korean Intellectual Property Office (KIPO) to maintain granted patent rights.

Due Dates

After examination and prior to the grant of a patent, the annual maintenance fees for the first to third year must be paid. These fees must be paid at the same time and within three months after the receipt of the decision to grant a patent. The annual fees for the fourth and subsequent years must be paid before the anniversary of the date of the first payment. However, payment can still be made, along with an 18% late payment surcharge, before the expiration of six months from the anniversary of the date of the first payment. In addition to paying in annual installments, payments may be made concurrently for years with the same fee structure. Namely, a single payment can be made for the fourth to sixth years, or a single payment may be made for the seventh to ninth years, tenth to twelfth years, or thirteenth to twenty-fifth years. Nonetheless, all payments must be accompanied by filing Form No. 25, which is obtainable from the KIPO.

Maintenance Fees

The annual fees for maintaining a patent granted by the KIPO are (as of 2023): 15,000 KRW plus 13,000 KRW per claim annually for the first to third years, 40,000 KRW plus 22,000 KRW per claim annually for the fourth to sixth years, 100,000 KRW plus 38,000 KRW per claim for the seventh to ninth years, 240,000 KRW plus 55,000 KRW per claim for the tenth to twelfth years, and 360,000 KRW plus 55,000 KRW per claim for the thirteenth to twenty-fifth years. For patent terms that have been extended due to an unreasonable delay in prosecution caused by the KIPO, the annual fee for each of the twenty-first to twenty-fifth years is 360,000 KRW plus 55,000 KRW per claim.

Who Can Make Maintenance Fee Payments?

Maintenance fees and any necessary surcharges may be paid by direct deposit or by using an electronic billing system. To pay a fee to the KIPO, the paying party must have a residential or business address in Korea, and may otherwise be an authorized friend, relative, or patent attorney.

Foreign Associates

If you are patent lawyer or patent agent practicing outside of Canada reading this, please also see our article on the key features of Canadian patent prosecution for foreign associates.