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)

Russia Small Flag Russia

If the patent for an invention, utility model, or industrial design lapses as a result of failure to pay the annual fee, there is a grace period that starts on the date of the lapse and extends until the earlier of three years or the final expiration date of the patent. During the grace period, the patent owner must make a written request for reinstatement and pay the reinstatement fee. The amount of the reinstatement fee is 2.5 times greater than the amount of the annual fee for the year of the submission of the request.

A third party that begins to use, or prepares to use, an invention, utility model or industrial design, the patent for which has lapsed during the grace period, retains the right to its further use free of charge.

If the renewal fee is not paid in a timely manner for a registered trademark or an appellation of origin of the goods, there is a six-month grace period for payment; a late fee of 2500 RUB is also imposed.

China Small Flag China

Trademarks: Renewal applications must be made within 12 months before the expiry date of the 10-year renewal term. There is a 6-month grace period during which a renewal application will incur a late filing fee of 250RMB.

Copyright: If elected, there are no renewal fees.

Patents: Failure to pay the annuity on time incurs a surcharge of up to 25%, which must be paid within 6 months of the annuity deadline. If no payment is made within 2 months after the deadline for surcharge payment, SIPO will issue a notice of termination. The patent right will be terminated unless the applicant replies to the termination notice within 2 months by paying a 1,000RMB restoration fee.

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 renewed subject to the payment of a late renewal fee.

Switzerland Small Flag Switzerland

As a general rule, the IPI will grant the owner of the IP right an additional deadline to pay the renewal fee, plus a penalty of CHF 50. If the payment is not done within this additional deadline, the IP title will not be renewed. For the renewal of patents, the rights can be re-established if the patent applicant provides prima facie evidence that he/she/it has been prevented, through no fault on his/her/its part, from observing the time-limit.

Poland Small Flag Poland

For all subjects of rights, except plant varieties, it is possible to pay a periodic or renewal fee within six months after the term of protection lapsed (grace period), but this is subject to an additional fee for late renewal. Failure to pay any renewal fees within the grace period results in expiry of the right in question.

Italy Small Flag Italy

The IP right owner who fails to pay the renewal fees within the due time may in any case renew it by paying not only the renewal fees but also an extra fee for the late payment within the six months after the expiration of the deadline.

Cyprus Small Flag Cyprus

For each of the following intellectual property rights, the registration can be renewed either a few months before or a few months after the renewal date. For patents and trade marks there is the option of restoration.

Patents and SPCs
Annual renewal fees must be paid in advance each year during the three months preceding the anniversary of the filing date. Payment may also still be made during a six-month grace period with payment of a surcharge for each month. If annual fees are not paid in due time or within the grace period, the patent will lapse or the application will be deemed to have been withdrawn. The patent or application may be restored upon application by any interested person made within twelve months from the expiration of grace period of paying the annual fee with the payment of annual fee, surcharge and restoration fee.

Trade marks
Renewal fees must be paid during the last three months of the current registration period. If renewal is not affected in time the Registrar publishes to the Official Gazette of Cyprus that the trade mark was not renewed and that it can be renewed up to two months after the date of this publication upon application and payment of the renewal fee and the additional prescribed fee. In case that a trade mark is not renewed on its due date or within two months after the date of publication, there is a six-month grace period following the renewal deadline during which the trade mark registration can still be restored by filing a form and paying the renewal fee together with the additional restoration fee.

Designs
Renewal fees must be paid during the last three months before the expiration of a five-year registration period. There is a grace period of six months following the expiration of the registration or renewal period of the design. There is no provision for restoration – if the grace period for payment of renewal fees expires, restoration is not possible.

Israel Small Flag Israel

Patents:
If the renewal fees were not paid, there is a 6 montha grace period during which the renewal fees can be paid, together with an additional late fee.

At the end of the grace period, the Patent expires (due to unpaid fees), and its expiration is published.

A patentee may request to revive a patent that has lapsed. Such request should provide arguments to convince the Registrar of Patents that the non-payment of the annuity was for a reasonable cause, that the patentee did not intentionally let the patent lapse, and that the request for revival has been filed as soon as possible after the patentee has become aware of the failure to pay the annuity, and provided that the associated revival fee is paid.

Following the filing of such a request, the examiner, after being convinced as such, will publish the intention to revive the patent in the Patents Gazette and the application will be opened for oppositions for 3 months. If no opposition has been filed during the opposition period, the Registrar of Patents will publish the revival, and he may set terms and stipulations for the re-establishment.

Trademarks:
The term of protection is ten years from the filing date. There is a grace period of six months to renew a mark, provided that the relevant official fees are paid. Unless a registered trademark is renewed within the statutory deadline or the grace period, the trademark is abandoned. However, the abandoned trademark will remain valid for citation purposes for an additional period of 12 months.

Chile Small Flag Chile

  • Trademarks:
    In the event that the renewal fees are not paid within 30 days following the acceptance of the renewal, the Law provides for a surcharge of 20% of the total to be paid for each tardy month, for up to 6 months. If the fees have not been paid within these 6 months, the renewal is considered abandoned and the trademark expired.
  • Patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits:
    Chile does not consider annual payments for patent for inventions / utility models / industrial drawings and designs.
  • Copyright:
    There is only one registration fee for any intellectual work. There are no renewal payments.

Greece Small Flag Greece

Failure to pay any renewal fees will result in the loss of the relevant IP right. However, the law provides for a grace period of 6 months, within which the IP owner may pay the fee due, with a 50 % fine.

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 UKIPO must be satisfied that the failure to renew was unintentional.

Trade Mark
UK 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.

European Union trade marks may be renewed 2 months before, or 2 months after, the renewal date. If the mark is renewed in the 2 months after the renewal date, a surcharge of 25% is levied on the renewal fee. If the mark is not renewed within the 4 months, the EUIPO will issue a notice that the registration is expired from the last anniversary date of registration.

Registered Design
A registered design may be renewed 6 months before the renewal date, and up to 6 months after. Renewals in the period 2-6 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.

Community registered designs may be renewed 2 months before, or 2 months after, the renewal date. If the design is renewed in the 2 months after the renewal date, a surcharge of 25% is levied on the renewal fee. If the design is not renewed within the 4 months, the European Union Intellectual Property Office will issue a notice that the registration is expired from the last anniversary date of registration.

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

Pakistan Small Flag Pakistan

In case of failure to pay any renewal fees, the IP right is likely to be ceased/removed. As a remedy, restoration application within the prescribed time may be filed in some instances and if not filed the right ceases to exist.

Ecuador Small Flag Ecuador

Brands are the only rights that can be renewed. he non-payment of the fee could involve the suspension of renewal. As a measure to remedy the lack of payment at the right time is to pay the fee.

It is worth mentioning that in case of patents the non-payment of a maintenance fee results the abandonment. In this sense, it is an obligation to pay at the right time.

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.

Malaysia Small Flag Malaysia

Patents, trade marks and industrial design: the grace period is one year from the expiry date, with an option to restore the registration.

Geographical indications: the grace period is six months from the expiry date, with an option to restore the registration.

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.

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.

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.

Latvia Small Flag Latvia

For those rights that require registration that is for patents, SPCs, designs, and trade marks, as well as plant varieties and semiconductor topologies there is a six-month grace period for payment of the renewal fees. After that period restoration of rights is possible only in exceptional circumstances.

Patents - If the annuity is not paid until the end of the month, in which the filing date happens to be, the respective Law provides for a 6-month grace period for payment of the annuity with an extra charge of 25%.

Trade marks - If the renewal fee is not paid within a prescribed time limit, the Law provides for a 6-month grace period for payment of the renewal fee with an extra charge of 90 EUR.

Designs - If the renewal fee is not paid within a prescribed time limit, a 6-month grace period is provided for payment of the renewal fee with and an extra charge of 70 EUR.

Vietnam Small Flag Vietnam

Failure to pay renewal fee or annuities within a period of 6 months prior to the due date or in a 6-month grace period shall result in the termination by default of validity of patents for invention, utility solution or design and certificate of registration of trademark. No provision on restoration of validity is available in the IP Law as a result of failure to pay renewal fee.

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.

Malta Small Flag Malta

Trade marks
Technically, a renewal must be filed before the expiration of the registration, and if the registration is not renewed, the Comptroller of Industrial Property shall remove the trade mark from the register.’ However, Maltese law provides a practical solution in that if the renewal fee has not been paid and the request for renewal has not been made within the stipulated time frame, the proprietor may renew the mark within six months from the date of expiration of the last registration provided that the request for renewal is filed on the prescribed form and is accompanied by the renewal fee and an additional (late payment) fee. If on the expiration of the last registration of a trade mark, the renewal fee has not been paid and the request for renewal has not been made and no action has been taken by the proprietor within those 6 additional months, the Comptroller of IP has the power to remove the mark from the register.

Trade marks: Restoration
Maltese law also caters for the restoration of the registration of a trade mark which has been removed from the register. If a mark was removed from the register for failure to renew its registration in time, the owner may, upon a request filed on the prescribed form within six months of the date of the removal of the mark and accompanied by the appropriate renewal fee and appropriate restoration fee, restore the mark to the register and renew its registration.

Registered Designs
If renewal fees to prolong the lifetime of a registered design right a fee are not paid before the date of expiry, the design may be removed from the registry. However, the request for renewal may be made and the fee paid up to six months after the date of expiry, in which case any additional fee is also due.

Patents
A patent will lapse if a maintenance fee and any surcharge have not been paid in due time, on the date when the maintenance fee was due. When a maintenance fee has not been paid on or before the
prescribed due date, it may still be validly paid within six months of that date, provided the prescribed surcharge is paid within that period.

Patents: Restoration
The proprietor of a patent who is unable to observe a time limit for filing a maintenance fee has the right to apply for the patent’s re-establishment if the non-observance in question has the direct consequence of causing the refusal of the patent application, or the refusal of a request, or the lapse of the patent, or the loss of any other right or means of redress. Such a request must be filed in writing within two months from when the cause of non-compliance is removed or within the year immediately following the expiry of the unobserved time limit, whichever is the earlier. In the case of non-payment of a maintenance fee, a period of six months is deducted from this one-year period.

Brazil Small Flag Brazil

If both ordinary and extraordinary deadlines are not met in accordance with administrative procedures the IP right is extinguished and there is no way to revert that situation.

Norway Small Flag Norway

If the owner does not pay the renewal fees or neglects to renew the registration, the registration will eventually cease.

Updated: September 19, 2018