Your go-to guide to patent renewals

The what and why of patent renewals

A patent is generally granted for a maximum of 20 years from the filing date, during which time the holder will have rights to exclude others in the jurisdiction from manufacturing, using or distributing the invention or products directly created by it. Although there is no obligation to retain a patent for this full term, you must pay maintenance fees throughout its actual lifetime, sometimes starting when the application is still pending. These patent renewal fees – often called annuity fees wherever they recur on a yearly schedule – give cause to reassess the current and expected worth of the covered technology on a regular basis.

They are also a practical step in ensuring ongoing protection; essentially, the cost of keeping industry competitors at bay and a means of funding the registering office. Therefore, it is important to see renewals not as frustrating fees but as a calculated investment coming from and serving your IP management scheme. This is the first step in creating a patent renewal plan that works; the second is anticipating obstacles and planning around them.

Top challenges in the patent renewal process

The initial difficulty you are likely to encounter is globalization, and the word itself implies just how significant this stumbling block can be. The problem is that you must renew your rights with the patent office in each jurisdiction individually – so the broader your reach, the more complicated and expensive this operation will be. You must understand varying fees and shifting rules, as well as keep track of different deadlines.

As an example, say you patented an invention with both the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). Your U.S. patent can be renewed at 3.5, 7.5 and 11.5 years from the grant date, or with a surcharge at four, eight and 12 years – but you cannot pay early. Meanwhile, patent renewals before the EPO occur yearly, starting two calendar years after the filing date (third-year renewal); this first fee can be paid up to six months early, while subsequent ones can only be paid three months early. A six-month grace period follows these due dates with a surcharge. 

On top of that, each office has its own pricing structure; this may depend on patent age, organization size, declared availability for licensing (license of right) and more. You will also have to pay renewal fees in each country where a European patent without unitary effect is validated. While a spreadsheet may help you oversee these costs, this method can make it arduous to budget for renewals over time, not to mention impact long-term decision-making.

It is very easy to get lost in a forest of deadlines and fees, and this can result in delays, surcharges, missed renewal payments and even lapsed patents. That is why you cannot assume all grants are the same: Oversimplification creates blind spots. Instead, you need an approach that unites different fees and due dates in a single workflow without generalizing.

Patent renewal strategies for success

When creating a patent renewal policy, it is often best to start broadly and work toward specificity, as big-picture determiners like budget and commercial goals help create the framework for more detailed arrangements.

For instance, a far-reaching perspective may begin with a patent valuation project, which helps establish which grants are worth preserving as longstanding assets. This, in turn, helps shape your budgeting priorities, as it allows you to calculate how much money you have available for maintenance and enforcement measures versus innovation activities like research and development. 

When you have finalized the broad elements, it is time to look at the finer points of enacting your renewals. There are three main options:

• Manage internally: This may be appropriate for small businesses with few patents or those with specialized in-house teams. Of course, this method places a heavy burden on those responsible for directing the operation, particularly if they have to become familiar with procedures in multiple jurisdictions, where information may not always be readily available.
• Manage via a law firm: Portfolio management can be entrusted to an external law firm specializing in IP. Attorneys or paralegals at the firm can then notify the patent owner when a fee is due and seek instructions. However, this option can be expensive for the patent owner and risks data accuracy in overlapping email chains.
• Manage via a patent renewal service provider: The third possibility is working with a service provider specializing in managing global patent renewals. This is becoming increasingly recognized as the best way to manage medium-sized and larger portfolios. Providers typically offer sophisticated Intellectual Property Management Systems (IPMSs) to ensure that patent data is updated reliably and that no deadlines are missed. This software also keeps track of all the latest regulations regarding due dates, fees and procedures at each jurisdictional office. Finally, centralized portfolio management offers cost efficiencies as patent renewals can often be combined with the provider's other IP-related services.

Of course, a hybrid system is also possible, consisting of a small internal team overseeing strategic moves and an external patent renewal provider carrying out patent maintenance actions.

Taking the first step in your patent renewal plan

Working with a patent renewals service provider means you benefit from the experience and understanding of dedicated IP specialists. Only when this expertise is as globalized as your patents can you achieve maximum efficiency, accuracy and value in your portfolio management.

At Dennemeyer, our professionals work with vetted agents in key countries to expand our network and deliver knowledge of the latest legal changes worldwide. With more than 60 years of practice, we are established and highly qualified, managing some of the world's most valuable IP portfolios. We offer the global reach, economies of scale, scope of support and IPMS technology that only a full-service provider is capable of.

Above all, we aim to provide an adaptive service that fits and responds to your organization's needs. You stay in control without having to fret about missing deadlines. That means your team can focus on building value and delivering growth from your patents, assured that your all-important IP rights are in safe hands.

Contact us today to see how we can help you keep patents active.