Patent Annual Fees: How to Recover Patent Rights from the Mistakes in Patent Annual Fees in Europe

Recently, Yezhima has received many inquiries from patent owners about the invalidation of their patent rights due to failure to pay annual fees on time. We can't help but sigh for these patent owners. It is really a pity for patent owners to lose their patent rights after a long time because of overdue annual fees. As an important component of intangible assets, patents are one of the important indicators to measure whether a technology company has technical capabilities. Therefore, paying annual fees on time and maintaining the company's important assets are necessary tasks for the company's intellectual property management personnel. Whether it is a service agency or a patent owner, knowing more about the global patent annual fee rules can save the important assets from loss.

As an important means of maintaining patent rights, annual fee monitoring, although the frequency of action is low, is extremely important. In fact, patent offices around the world have fully considered the problem of patent holders' annual fee delays when formulating annual fee payment rules. For example, annual fee payments in European countries must be paid annually from the third year after the application date, but the deadline for annual fee payment is the last day of the month of the application date, which leaves a certain buffer time for patent holders. If the deadline of the month is missed, the patent holder can still use the 6-month grace period. In fact, this 6-month grace period is basically applicable to all countries in the world. Some countries even have a 12-month grace period, but as a punitive measure, the patent office generally charges a minimum of 25% and a maximum of 3 times the late payment fee.

If the six-month grace period is missed, the patent owner has one last trick to use, which is a request for restoration of rights.

For Chinese patent applicants or patent owners, the request for restoration of rights is not unfamiliar. After all, during the patent application process, the delay in the official response deadline can be achieved by filing a request for restoration of rights. The Chinese Patent Office does not have strict requirements on the reasons for the restoration of rights. Basically, as long as the restoration fee is paid in full, the rights can be restored. However, in the formulation of the rules for the annual fee period, the Chinese Patent Office has no remedies for overdue annual fees except for a grace period of 6 months. Considering that the Chinese Patent Office does not issue any official notifications of annual fee reminders for patents, this penalty is indeed a bit heavy.

The European patent has left the last measure for patent owners to recover losses in terms of the annual fee overdue rules, which is to request the restoration of rights on the grounds of "unintentional". The deadline is within 12 months from the missed deadline, and relevant evidence must be submitted when filing the request for restoration of rights to prove that the reason for the missed deadline is "unintentional". If a "loss of rights notice" issued by the EPO is received during this period, it may trigger the "elimination of the reasons for non-compliance with the time limit within two months" and serve as the starting date for the request for restoration of rights.

The "unintentional" reason is a reason with higher requirements than the "due care" reason and is more stringent in terms of evidence provision. The patent owner needs to prove that "although all due care has been taken under the circumstances at the time", mistakes or delays still occurred, which means that "unintentional" has a higher legal threshold than "due care".

To provide evidence of "non-intentionality", the patent owner needs to provide evidence of how the patent owner has maintained its patent rights and patent affairs when managing its patent assets, and explain what operations led to the invalidation of the patent. Generally speaking, the following information may be involved:

• What internal management procedures the patent owner or agent follows to ensure the payment of patent annual fees;
• How internal procedures have changed with respect to late patents;
• What procedures are in place for reminders of annual patent fees and what measures are in place to check and prevent errors; and
• How expired patents are discovered.

The EPO or other European national patent offices, such as Germany and the United Kingdom, usually hope to see that the patent owner/service agency has a suitable annual fee management system for its own use, but due to some management errors or other series of situations, such as administrative errors, communication errors, illness, etc., the mistakes are caused unintentionally, that is, the patent owner needs to prove that although the patent owner or its service agency "has taken all the required due care", the mistakes still occurred. In order for the EPO examiner to accept the evidence provided by the patent owner, we usually recommend that the witness testimony in the evidence be notarized. In other words, for the patent owner, the evidence provided for the restoration of rights needs to form a closed loop, perfectly explain the reasons for the mistakes, and provide methods and means to avoid similar mistakes in the future.

In terms of cost, the cost of restoring rights is quite high. Generally speaking, the cost of preparing and submitting a request for restoration of rights will be calculated based on the hourly rate of a European patent attorney or patent attorneys in various European countries. The average cost will be between RMB 30,000 and RMB 100,000. The official fee for the EPO request for restoration of rights is 185 pounds, and the official fees for other European countries vary. The request fee for restoration of rights must be submitted together with the request for restoration of rights.

Even so, examiners in various national patent offices have the discretion to decide whether a request for restoration of rights can be recognized by the EPO or other national patent offices, and may also need to provide further evidence.

In order to enable enterprises and service agencies to fully understand the annual fee payment rules, Yezhima has carefully sorted out the patent annual fees and official fees and their payment rules for nearly 80 countries around the world. Friends in need can contact Yezhima to obtain the [Global Patent Annual Fees Guide], or directly use the Yezhima Patent Management System for maintenance.