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 (2nd edition)

Japan Small Flag Japan

The registered right will lapse due to non-payment of renewal fees.

In the case of a failure to pay renewal fees, the rights holder may make an additional payment along with the unpaid renewal fees within the six-month grace period from the payment deadline in order to maintain or renew the registered right.

In addition, where the rights holder has justifiable reasons for having been unable to pay the renewal fees by the payment deadline, the rights holder may make an additional payment along with the unpaid renewal fees only within two months from the date on which such reasons have ceased to exist but not later than one year (six months in the case of trademarks) after the expiration of the payment deadline.

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 additional late renewal fees (AED 1,000, approx. USD 273). 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)

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.

Utility Certificates

Designs

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

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

Geographical Indications

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

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, along with the relevant fee 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.

Updated: June 15, 2018