What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

Intellectual Property

Singapore Small Flag Singapore

If renewal fees are not paid, the registration of a design, plant variety, or trade mark will expire. As for patents, which last for a term of 20 years, the registration will lapse if renewal fees are not paid when required.

Save for plant varieties, the registration can potentially be renewed if late renewal fees are paid within the stipulated time frame.

France Small Flag France

Failure to pay any renewal fees is sanctioned by the lapse of the right. However, right holders can benefit from a grace period (of 6 months from the due date) during which the right can be renew subject to the payment of a late renewal fee.

Portugal Small Flag Portugal

R: Usually, an extra period is offered in order to pay the renewal fees. In this cases it is also necessary to pay a penalty for the delay.

India Small Flag India

Patents:
The non-payment of renewal fee within the prescribed time or within the extended period as prescribed for payment of renewal fee can lead to cessation of a patent.

However, the patentee, or his legal representative can make an application for Restoration of the patent along with a statement setting out the circumstances which led to the failure to pay the renewal fee, within eighteen months from the date on which the patent has ceased to have effect. The restoration of such design is discretionary to the Controller.

Trade marks:
After the expiry of the registration, a grace period of 6 months (from the expiration date) is also provided to the Applicant to apply for renewal of the said registration. Further, The Trade Marks Law provides for restoration of removed Trade Mark after six months and within one year from the expiration of the last registration. The discretion is vested with the Registrar as he may allow restoration either generally or subject to such conditions or limitation as he thinks fit to impose.

Geographical indication:
A Geographical indication can be removed from the register on non-payment of renewal fee within the stipulated time. Where a geographical indication has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the geographical indication on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the geographical and renew registration of the geographical indication either generally or subject to such condition or limitation as he thinks fit to impose, for a period of ten years from indication to the register the expiration of the last registration.

Designs:
Design registration can be renewed for a period of five years from the original term of ten years. The non-payment of renewal fee may lead to cessation of the design.

However, an application for restoration can be filed by the applicant within one year from the date on which the design ceased to have effect along with a statement setting out the circumstances which led to the failure to pay the renewal fee. The restoration of such design is discretionary to the Controller.

Domain Names:
Once a domain expires, it enters "Renewal Grace Period (RGP)" which varies from 30 days to 45 days based on domain extension and registrar. During the grace period the domain owner can renew their domain names at any time at their regular price without penalty (if not auctioned). However, one can not transfer the domain name to other registrar, unless it is renewed first. At the end of Renewal Grace Period, domain name is deleted by registrar and it enters the "Redemption Period" of 30 days. During the redemption period, the domain owner can redeem their domain name by paying redemption fee in addition to the cost of one year domain renewal. Redemption fee varies for each domain extension. 60 days after expiration (assuming RGP of 30 days), the redemption period ends. The domain name will be placed in a "Pending Delete" status at the registry for upto 5 days. During this time, it is not possible to redeem, recover or renew the domain name. The only way to get the domain back is to wait until, domain name is dropped by the registry and made available for registration. After the 5 day pending delete period, the domain name will be deleted from registry. At this point, the domain will be available to general public for registration on first come first serve basis.

Greece Small Flag Greece

Failure to pay renewal fees will result to loss of the relevant IP right. However, the IP owner may still maintain its rights if it pays the renewal fees within 6 months of the due date. Such late renewal is burdened with a 50% surcharge.

Japan Small Flag Japan

In the case of a failure to pay renewal fees, registered rights shall be deemed to have been extinguished. Remedies are available, such as a limited extension of the payment period.

Mexico Small Flag Mexico

Inventions

IP right

Consequence of a failure to pay

Steps to remedy a failure to pay

Patents

To become part of the public domain.

To file a reactivation request within the 12-month
grace period available. Official fees shall be paid.

Utility models

Industrial designs

Integrated circuits

Brands

IP right

Consequence of a failure to pay

Steps to remedy a failure to pay

Trademarks

The lapsing of the right and therefore become available
again for any party.

To file the renewal application within the 6-month
grace period available.

Trade names

Slogans

Appellations of Origin

N/A

N/A

Copyright and other rights

IP right

Consequence of a failure to pay

Steps to remedy a failure to pay

Reservation of rights

The lapsing of the right and therefore become available
again for any party.

To file the renewal application within a month grace
period available.

Plant varieties

To become part of the public domain.

N/A

China Small Flag China

Patents: failure to pay the annuity on time incurs a surcharge of 25%, which must be paid within six months of the annuity deadline. If no payment is made within this period, SIPO will issue a notice of termination. The patent right will be terminated unless the applicant replies to the termination notice within two months by paying a 1,000RMB restoration fee.

Trademark renewal applications must be made within 12 months of the expiry date of the 10-year renewal term. There is a six-month grace period during which renewal applications incur a late filing fee of 250RMB.

There are no renewal fees for copyright (if registration is elected).

United Kingdom Small Flag United Kingdom

For each of trade marks, patents and designs, the registration can be renewed either a few months before or a few months after the renewal date. If the right holder misses the renewal window, there is a grace period within which the right owner can reinstate the right.

Patents
Patents can be renewed between 3 months before the renewal date and 1 month after the renewal date. In the 6 months after the renewal date, the patent owner can renew the patent upon payment of a penalty of £24 for each full month that the patent was not renewed. If the patent is not renewed after 6 months, it will lapse. The patent owner then has 13 months from the date the patent lapsed to apply to restore it, for £135. The application requires supporting documentation detailing the reasons for missing the renewal date and the UK IPO must be satisfied that the failure to renew was unintentional.

Trade Mark
Trade marks may be renewed 6 months before, or 6 months after, the renewal date, for a £200 renewal fee (plus £50 for each additional class of goods or services in the registration, plus £50 if renewing in the 6 months after the renewal date). If not renewed, the mark will be removed from the register. The trade mark owner can apply to restore the trade mark within 6 months of removal from the register, for a restoration fee of £100 and upon the provision of a statement explaining why the mark was not renewed within the renewal period, but there is no guarantee of restoration.

Registered Design
A registered design may be renewed 6 months before the renewal date, and up to 6 months after. Renewals in the period 1-6 months after the renewal date are subject to a penalty of £24 per month for each month that has passed. If not renewed, the registration will lapse. The right holder can apply to restore the right for £120, accompanied by a written explanation explaining with good reasons why the renewal did not take part in the standard time, but there is no guarantee of restoration.

Plant Variety Rights
A plant variety right lasts for 25 years, or 30 years in the case of trees, in the UKIPO and EUIPO, subject to the payment of annual fees.

South Africa Small Flag South Africa

Patents

Failure to pay the renewal fees timeously results in the lapsing of the patent. It is, however, possible to pay renewal fees within an extended period of six months upon payment of the prescribed extension fines. If it is desired to reinstate a patent which has lapsed through non-renewal it is necessary to make application to the Registrar for restoration of the patent. Before restoration of a lapsed patent is ordered, the Registrar must be satisfied that the omission to pay the renewal fee was unintentional, and that no undue delay has occurred in making the application for restoration of the patent.

Designs

Failure to pay the renewal fees timeously results in the lapsing of the registration of the design. A six months extension of time is obtainable for paying renewal fees, subject to the payment of a fine. Where registration of a design has lapsed owing to non-payment of any prescribed renewal fee, the registered proprietor may in the prescribed manner and on payment of the prescribed fee, apply to the Registrar for the restoration of such registration. If the Registrar is satisfied that the omission to pay the prescribed renewal fee was unintentional and that no undue delay has occurred in the making of the application, the design may be restored to the register.

Plant Breeders’ Rights

The registration lapses after a late renewal grace period of six months. There is no provision for restoration of a lapsed Plant Breeder’s Right.

Trade Marks

Failure to pay the renewal fee before the expiry of the registration shall attract an additional fee and failure to pay within six months following the expiration date shall attract a further additional fee. If the renewal fee remains unpaid in the six months following the expiry of the registration the Registrar may advertise the fact of non-payment in the Patent Journal. If payment is not made within 30 days of the advertisement the Registrar may remove the registration from the register. However, the Registrar may upon payment of the renewal fee, together with the additional fee, restore the mark to the register if satisfied that it is just to do so and upon conditions she may think fit to impose.

UAE Small Flag UAE

Right

Are late renewals possible?

TMs

Yes, within the 3 month grace period from the original renewal date, with payment of late renewal fees (AED 2,000, approx. USD 545). Once that period expires, it is no longer possible to renew the registration. However, under local law a third party cannot register the same mark for the same or similar goods/services until a period of 3 years from the original renewal date has passed.

Patents (UAE national filing)
Utility Certificates
Designs

Yes. The late annuity charge is AED 410 (approx. USD 111) and must be paid within a 3 month grace period, where the annuity payments have not been paid by the annuity deadline. If the annuities and late fees are not paid within the grace period, the patent/design/utility model will be cancelled.

Patent (GCC patent filing)

Yes. The late annuity charge is USD 270 and must be paid within a 3 month grace period, where the annuity payments are not paid within the first 3 months of the beginning of the year. If the annuities and late fees are not paid within this six month period from the beginning of the year, the patent will be cancelled.

Copyright

N/A

Philippines Small Flag Philippines

Failure to pay the annual fees for patents within the grace period of six (6) months from the publication of the notice of non-payment shall result in the withdrawal of the application or the lapse of the patent, without possibility of revival.

The renewal fee for industrial designs shall be paid within twelve (12) months preceding the expiration of the period of registration. A grace period of six (6) months shall be granted for payment of the fees after such expiration, upon payment of surcharge. Failure to renew shall result in the lapse of the industrial design registration.

The request for renewal for trademarks shall be made any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or within six (6) months after such expiration on payment of the additional fee prescribed by the rules. Otherwise, the trademark registration will be deemed lapsed.

United States Small Flag United States

(a) Patents
A patent expires if a maintenance fee is not paid. If the failure to pay the maintenance fee was unintentional, the patentee may petition the USPTO to accept a late payment and reinstate the patent. 37 C.F.R. § 1.378. A reinstated patent is subject to the conditions set forth in 35 U.S.C. § 41(c)(2).

(b) Trademarks
The registration expires if the renewal application is not timely filed. Failure to timely file the renewal application cannot be cured.

(c) Copyrights
Renewing registrations for works created before January 1, 1978 is optional and the term extends even without renewing the registration. Renewal is not needed under the current copyright act.

Germany Small Flag Germany

For the annual fees of patents, supplementary protection certificates and patent applications, for the renewal fee of trade marks and the maintenance fee for utility models and registered designs, there is a two months deadline to pay the due fee without surcharge and a further four months to pay the fee with a surcharge of EUR 50, Section 7 Patent Cost Act. If the annual, renewal or maintenance fee is not paid at all, not paid on time or not paid in full the intellectual property right will be deleted from the register and loses its protection. For plant variety rights the consequence of not paying the annual due fee is regulated in Section 31(4) No. 3 Act on the Protection of Plant Varieties. The plant variety is cancelled if the fee is not paid after an additional deadline set by the German Federal Plant Variety Office.

Switzerland Small Flag Switzerland

Within 6 months of the renewal/maintenance fee deadline the failure to pay the fees can be remedied by paying the renewal/maintenance fees plus a penalty. The penalty fee is CHF 50 for patents, designs and trademarks alike. This does not apply to domains where the terms and conditions of the registrar set forth the consequences for failing to pay the annual fees.

Ukraine Small Flag Ukraine

Patents and utility models: the grace period is 12 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

Trademarks: the grace period for renewal is 6 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

Industrial designs: the grace period for renewal is 6 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

Plant varieties: the grace period for the renewal is 12 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

Geographical indications and appellations of origin: the grace period for the renewal is 6 months after the due date. During the grace period the renewal fee is increased by 50%. Further restoration is not provided by Ukrainian law.

Turkey Small Flag Turkey

The owner of any trademark should file an application for the renewal of the protection term to the Authority within six months before the expiration date of the protection term provided that the renewal fee shall be deposited within the prescribed term and a document proving the payment is duly submitted to the Authority. If the document certifying payment of renewal fee is not submitted to the Authority within the prescribed term, the owner of the trademark may file an application for renewal within six months as from the expiration date of the protection term by depositing an additional fee. If the renewal is not deposited meaning that the right is not renewed, the relevant right shall expire on the deadline of the protection term. Consequences of a failure to pay renewal fees for other intellectual property rights are not regulated under IPL. Furthermore, no renewal process is regulated for traditional product names and geographical indications since they provide protection for an unlimited period of time.

Sweden Small Flag Sweden

(a) Trademark Rights
A reminder is issued when the registration has expired, after which the Trademark proprietor must pay the renewal fee within six months in order to have the registration renewed. The registration will otherwise cease.

(b) Design Protection
A reminder is issued when the registration has expired, after which the Trademark proprietor must pay the renewal fee within six months in order to have the registration renewed. The registration will otherwise cease.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:
The annuities should be paid within three months after the due date. There are two further grace periods of three months during which annuities may be paid with a surcharge of 25% and 50% correspondingly.

TRADEMARKS:
The renewal application shall be filed and the renewal fees shall be paid in the six months preceding the expiry of the registration.

The renewal application and the payment of the renewal fees may still be validly made within six months of the expiration of the registration, with the obligation to satisfy, simultaneously, a surcharge of 25 percent of the quota if the payment takes place during the first three months, And 50 percent if carried out within the next three months.

Failure to pay the renewal fees will imply the expiration of the trademark and the registration will be canceled.

DESIGNS:
The renewal application shall be submitted and the renewal fees shall be paid within six months prior to the end of the relevant period of validity.

Failing that, it may still be validly made within a period of six months from the end of it, with the obligation to pay, simultaneously, a surcharge of 25 percent of the fee if the payment takes place during the first three months, and 50 percent if carried out within the next three months.

Failure to pay the renewal fees will imply the cancellation of the design registration.

COPYRIGHTS:
Copyrights are not subject to renewal.

Updated: July 12, 2017