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 (3rd edition)

Malaysia Small Flag Malaysia

Patents, Utility Innovation and Industrial Design: the grace period is six months from the expiry date, with an option to restore the registration.

Trade Marks and Geographical indications: the grace period is one year from the expiry date, with an option to restore the registration.

Norway Small Flag Norway

If the annual fee for a patent is not paid at the application stage, the application will be rejected. Failure to pay the annual fee for a granted patent will lead to the patent being deleted. If the renewal fee for a registered design or trademark is not paid, the registration will cease to exist.

A failure to pay may be rectified within a deadline of six months, by payment of the annual fee/renewal fee and an additional late payment fee.

Singapore Small Flag Singapore

  1. Patent rights – the patent will cease to have effect. An application to restore the lapsed patent may be made within 6 months with payment of a fee.
  2. Industrial design rights – the registration will cease and be removed from the Register. A restoration application may be made within 6 months with payment of a fee.
  3. Trade mark rights – the registration will be removed from the Register. A restoration application may be made within 6 months with payment of a fee.
  4. Geographical indications – a renewal application may be made up to 6 months after the expiry of the registration with payment of a fee. If this is not done, the GI will be removed from the Register.
  5. Plant varieties protection – the grant of protection will be cancelled. A request for an extension of time to pay the annual fee must be made before the due date for payment.

Mexico Small Flag Mexico

Inventions

IP right

Consequence of a failure to pay

Steps to remedy a failure to pay

Patents

Falling into public domain.

To file a restoration request within the 12-month grace period provided. Additional official fees would be payable.

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.

File the renewal application within the 6-month grace period available. No restoration available beyond the grace period.

Trade names

Slogans

Trade Secrets

Certification marks

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

Copyright registration

N/A

N/A

Reservation of rights

The lapsing of the right.

File the renewal application within the 1-month grace period available. No restoration available beyond the grace period.

Plant varieties

To become part of the public domain.

N/A

China Small Flag China

Patents or trademark: abandonment of the right with possible restoration.

Copyright, semiconductor topography and plant varieties: No renewal fees.

Ecuador Small Flag Ecuador

Trademarks are the only rights that can be renewed. If the fees are not paid, the trademark registration would not be renewed. As a measure to remedy the lack of payment at the right time the owner can pay the fee.

If the applicant does not renew the trademark, he could request the trademark again with preference rights.

It is worth mentioning that in case of patents, lack of payment of its maintenance fees causes the rejection of the registration. The applicant has grace period to pay the fee within the next 6 months, but with a penalty of 50% of the fee value.

South Africa Small Flag South Africa

Patents – patent will lapse if not renewed and the renewal fee is not paid within 6 months of the due with a fine. A lapsed patent can be restored if the lapsing was unintentional and there was no delay in applying for restoration. Third parties can oppose an application for restoration in which case the matter will be referred to the Court of the Commissioner of Patents for a decision.

Registered Design – as for a Patent.

Trade Mark – Trade mark will expire if not renewed on every 10th anniversary or within 6 months thereof with payment of a fine. Under exception circumstances a trade mark can be restored.

Plant Breeders Right can lapse if renewal not paid.

Cyprus Small Flag Cyprus

Patent annuities should be paid three months before the expiration of the first or succeeding year (whichever applies). In cases where the annuity is not paid thus, it may still be paid within a grace period of six months from, along with the payment of a surcharge. If an annual fee is not paid in accordance with the above, the application shall be deemed to have been withdrawn or the patent would be considered as having lapsed. A withdrawn patent or a lapsed patent may be restored following the filing of a restoration request to the Registrar within a 12-month period from the withdrawal/ lapse, provided the Registrar is satisfied that the failure to pay the annual fee concerned was unintentional and all annual fees due have been paid. In the event of a positive decision, the annuity and the surcharge fees should be paid, along with a restoration fee. Any interested person may appeal to the court against the decision of the Registrar granting or refusing to grant a request for restoration.

In the event that renewal fees are not paid within the stipulated time frame (within the three-month period prior to the lapse of registration- within this time frame the Registrar informs the right holder of the impending lapse of the registration), the Registrar publishes a notice in the Official Gazette of the Republic that the mark shall be deleted from the register if the renewal fee is not paid within the two month period from the date of publication. The renewal fee (80 EUR) along with a penalty fee (20 EUR) are payable. If these fees are not paid duly, there is still an opportunity for a right holder to file a request for the re-registration of the mark with the filing of a specific form (No. 13) and the payment of a fee (30 EUR), which is at the discretion of the Registrar whether to approve it or not.

The renewal fees for a design must be paid within the last three months prior to the expiration of any five-year period. In the event of default, there is a grace period of six months after the expiration of the 5-year period in question, during which the renewal fee must be paid. If no payment is made within this grace period, there is no opportunity to restore the design right.

Japan Small Flag Japan

If a patentee fails to pay any patent fee, he/she can pay the patent fee plus a patent surcharge in the same amount as the patent fee within six months from the payment deadline to maintain the patent.

If the patentee fails to pay the patent fee plus the patent surcharge within six months from the payment deadline, the patent lapses as of the payment deadline. The same applies to utility models and designs.

A renewal fee must be paid at the same time as the filing of a renewal application for a trademark. If a trademark owner fails to pay the renewal fee, the trademark is not renewed.

Switzerland Small Flag Switzerland

As a general rule, the IPI will grant the owner of an IP right an additional deadline of six months to pay the renewal fee, plus an additional fee of CHF 50. If the IPI receives no payment within this additional term, the IP title will lapse. 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.

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 reverse that situation.

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.

Israel Small Flag Israel

Patents: There is a grace period of six months and if the fee is paid (with penalty) during the grace period then the patent is deemed to have never lapsed. If the fee is not paid, the patent’s expiry will be published. The patentee may apply for restoration of term, which will be allowed if it is shown that the annuity’s non-payment was for a reasonable cause, that the patent’s expiry was unintentional, and that the restoration was requested promptly after the patentee became aware of the failure to pay the annuity, provided that the associated restoration fee is paid. Any person who commenced (or made serious preparation to commence) exploitation of the invention after the patent’s expiry was published may continue doing so even if the term is restored.

Trademarks: If a mark is not renewed by the due date or within the six-month grace period (with payment of belated renewal fees), it is removed from the register and may no longer be renewed. It is possible to request its restoration by filing a suitable affidavit; such request has to be filed within six months from the end of the grace period. If more than a year has passed since the renewal date, it is no longer possible to reinstate an expired trademark registration.

Designs: six-month grace period; if fee is paid (with penalty) during the grace period, then the design is deemed to have never expired. If the fee is not paid, the design’s expiry will be published. The owner may apply for term restoration within six months from publication of the expiry; the application will be allowed if the registrar finds that the design owner took reasonable measures under the circumstances to pay the fees on time, provided that the associated restoration fee is paid.

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.

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.

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.

Peru Small Flag Peru

The direct consequence of a failure to pay any renewal fees is the expiration of the registration. The only step left, in order to remedy the lack of payment of the renewal fee, is to appeal within the 15 working days of issuing the expiration resolution, explaining the reasons for the omission of renewal.

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.

Trademarks:

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 either he may allow restoration 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 cannot 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.

Malta Small Flag Malta

Trademarks

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 trademark 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 trademark, 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.

Trademarks: Restoration

Maltese law also caters for the restoration of the registration of a trademark 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 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.

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.

Saudi Arabia Small Flag Saudi Arabia

The right holders lose the exclusive rights in its IP asset as a result of non-payment of renewal fee or annuities where applicable. In case of patents, application of restoration can be filed with Saudi Patent Office alongwith justification for failure to pay annuity. The right holder cannot claim restoration as a matter of right however the Saudi Patent Office may allow restoration.

Australia Small Flag Australia

  1. Patents – annual renewal fees must be paid on all standard and innovation patent applications if you want them to remain in force. These fees are usually due on or before the anniversary of the filing date of your application. Patent protection will stop if the renewal fee is not paid. Although, a six-month grace period applies during which time you may renew upon payment of the monthly late fee(s).
  2. Trade marks – a registration may be renewed every ten years. You can pay your renewal fees from 12 months before the renewal due date or up to six months after that date expires. Additional monthly fees will apply if the registration is renewed after the expiry date. If the fees are not paid within six months of the renewal due date expiration, the registration will lapse.
  3. Geographical indications – no renewal fees payable.
  4. Designs – after the initial five-year period of registration, you may choose to renew and extend the design registration for a further five years. If renewal fees are not paid before the due date, there is a six-month grace period during which you may renew. However, a monthly fee will apply from the date renewal is due.
  5. Plant breeder’s rights (PBRs) – an annual renewal fee is due each year on the date that your PBR was granted. The fee must be paid to maintain your exclusive rights. If these fees are not paid within 30 days of the due date, your PBR will be revoked.

United States Small Flag United States

  • Patents

If the maintenance fee is paid within 6 months of the deadline, then the patent holder must pay a surcharge of $160, $80 for a small entity, or $40 for a micro entity. If the patent holder fails to pay within six months of the deadline, then the patent will expire. If it expires, the patent holder can file a petition to revive the expired patent. To revive the expired patent, the patent holder’s failure to pay the maintenance fee on time must have been unintentional.

  • Trademarks

Failure to file Section 8 declaration will result in cancellation of the registration. If the applicant missed the filing dates of the Section 8 declaration or Section 9 application, then the applicant must file a new registration application to reclaim the cancelled trademark.

Updated: September 12, 2019