Is it a maintenance fee, a renewal fee, or an annuity fee? The answer is they have really all become synonymous with each other – the term used is dependent on which country you are in. Maintenance or renewal fees are paid to maintain a pending application or granted patent in force. In countries where fees are paid annually, they are called patent annuities.
1. European Patent Renewal basics
European patent renewals are payable every year while the application is pending. The first renewal fee is due from the third anniversary of the filing date of the application and is payable on the last day of the month containing the anniversary of the filing date. For Euro-PCT applications, European regional phase entries of a Patent Cooperation Treaty application, if the third-year renewal fee would be due earlier than the 31-month entry deadline for entry into the European regional phase, the renewal will not fall due until the expiry of the 31-month deadline.
According to Rule 51(1) with effect from 1 April 2018 the third-year renewal fee can be paid up to 6 months before the renewal deadline. For example, an application with a filing date of 15 December 2017 the third-year renewal fee is due 31 December 2019 but can be paid starting from 30 June 2019.
All subsequent renewals can be paid up to 3 months before the renewal deadline.
If a renewal fee payment is made before the allowed early payment window (6 months prior to the third-year renewal or 3 months for each subsequent year) the payment will not be valid, and the fee paid will be refunded.
The amount of renewal fees payable can be found here:
https://my.epoline.org/epoline-portal/classic/epoline.Scheduleoffees
2. Surcharge fee for missing renewal deadline
If the European patent renewal fee has not been paid by the renewal deadline it may still be paid within 6 months after the deadline, provided a late fee is paid. The European Patent Office (EPO) will issue a non-payment notice advising of the 6-month period for late payment. The late fee is an additional 50% surcharge of the original fee payable. The late payment can be made until the last day of the sixth month following the month containing the anniversary of the filing date. Following on from the above example the latest date this fee could be paid with surcharge is 30 June 2020.
3. Restoration
If the European patent renewal fee is not paid by the deadline or paid late the application will be deemed to have been withdrawn. If the missed deadline was unintentional there is only one possible route available that could potentially recover the case. This route is restoration under Article 122 of the European Patent Convention. To make a case for restoration it is necessary to show that the parties involved did not want to drop the case but could not comply with the deadline for paying the renewal fee despite the exercise of all due care. “All due care means all reasonable care, i.e. the standard of care that the notional reasonably competent patentee, applicant or representative would employ in all the relevant circumstances (see T 30/90)”. An application for restoration must be filed 2 months from the removal of the cause of noncompliance with the deadline.
4. Grant
Renewals are payable to the EPO until the mention of the grant is published. Once granted renewal fees are payable to each National Office where the European Patent is validated. For example, if a European patent application has a filing date of 20 February 2017 and the mention of grant is 21 February 2020 the renewal fee would not be payable to the EPO, but to the National Office(s) where the patent was validated. What this highlights is that the last renewal fee payable to the EPO is not the deadline but the beginning of the respective patent year that is important.
5. National Renewals
Each country has their own guidelines regarding the payment of annual renewals on a European Patent validated in the national country. Article 141 EPC outlines “National” renewal fees in respect of a European patent which may be imposed after the mention of the grant of the European Patent application is published.
6. Paying European patent renewals fees
There are several options for paying renewals to the EPO, but all fees must be paid online, the EPO does not except payments via fax or post. The fee can be paid using a deposit account, credit card or bank transfer. To pay via a deposit account requires a deposit account to be set up with the EPO as well as a registered Smart Card (a secure connection through a card issued by the EPO) and must use the online filing services. To pay via credit card does not require a Smart Card but does require a user to register for the online service, which involves setting up a username and password. The final option, introduced 23rd November 2020, is to pay via Bank Transfer which also requires a user to register for the online service.
More information on paying fees can be found here:
https://www.epo.org/applying/online-services/fee-payment.html
7. European patent renewal fee schedule
| Code | Description | Amount (EUR) |
|---|---|---|
| 033 | Renewal fee for the 3rd year | 490.00 + |
| 034 | Renewal fee for the 4th year | 610.00 + |
| 035 | Renewal fee for the 5th year | 855.00 + |
| 036 | Renewal fee for the 6th year | 1,090.00 + |
| 037 | Renewal fee for the 7th year | 1,210.00 + |
| 038 | Renewal fee for the 8th year | 1,330.00 + |
| 039 | Renewal fee for the 9th year | 1,450.00 + |
| 040 | Renewal fee for the 10th year (constant from 10th year on) |
1,640.00 + |
| 041 | Renewal fee for the 11th year | 1,640.00 + |
| 042 | Renewal fee for the 12th year | 1,640.00 + |
| 043 | Renewal fee for the 13th year | 1,640.00 + |
| 044 | Renewal fee for the 14th year | 1,640.00 + |
| 045 | Renewal fee for the 15th year | 1,640.00 + |
| 046 | Renewal fee for the 16th year | 1,640.00 + |
| 047 | Renewal fee for the 17th year | 1,640.00 + |
| 048 | Renewal fee for the 18th year | 1,640.00 + |
| 049 | Renewal fee for the 19th year | 1,640.00 + |
| 050 | Renewal fee for the 20th year | 1,640.00 + |
