Annuity payment

In order to keep a patent with its acquired rights active, the related annuities (or maintenance fees) must be paid.

In the history of a patent, from drafting the relevant application, to its deposit and its granting depending on the procedure it must undergo and the reference country, the holder must comply with the related formalities, including the payment of taxes.

These include:

Filing fee and search fee
Examination fee
Publication fee
Translation costs
Validation fee/extension fee
Grant fee
Annuity/renewal fees

What are annuities?

Maintenance fees that must be paid in advance, at the beginning of each year, in order to protect the due rights for the preservation of a patent.

The fee is mandatory regardless of the stage of the procedure (examination of the application or granting of the patent).

The methods, timing and amount of payment differ depending on the type of title obtained – if a patent for invention or a utility model– and the reference country and year.

In fact, the value of the annuities increases with each passing year.

The deadline is generally annual, but some countries - such as the US - require a non-annual periodic payment of annuities.

Annuities in invention patents

Once filed, an invention patent is already valid for the first four years, because the annuity is included in the filing fee.

The additional annuities are paid from the fifth year of the patent's life and, subsequently, for the following years until the natural expiry of 20 years.

The fee is paid each year on the day corresponding to the original filing date of the patent application, to be paid by the last day of the reference month.

If the patent application process has not yet been completed at the end of the fourth year, it is possible to wait for its granting before paying any overdue annuities, or those which may expire within the next four months from the granting, without any late payment fees.

Once this period has expired, the procedure still allows a further grace period of six months to rectify the annuities, with the addition of interest for late payment.

Utility model annuities

Utility model patents have a duration of 10 years from the application filing date, in which, together with the related fee, the first five years are paid.

In order to keep the utility model alive, the annuities must be renewed for the next five years before the expiration of the first five years, within the last useful day of the reference filing month.

If the patent application process has not yet been completed at the end of the fifth year, also in this case it is possible to wait for the title to be granted before paying any overdue annuities, or those which may expire within the next four months from the granting, without late payment fees.

Patent forfeiture

If the annuities are not paid (Article 75 of the Italian Industrial Property Code), once all the useful terms have expired, the patent is forfeit. The holder loses the exclusive right to the patent which falls into public domain: it can be freely used and reproduced. Moreover, if the holder no longer has an interest in keeping a particular patent alive, they can decide to stop paying annuities, effectively forfeiting the patent title.

Annuity payment services

In order to timely pay annuities and better manage the IP within your company, it's best to rely on experts in the electronic and automated management of annual deadlines.