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Renewals services

In order to maintain a patent application or patent, renewal fees must be paid. Failure to pay the fees will result in the loss of rights.

The rules vary in each jurisdiction, with the majority of countries requiring payment of annual fees whilst some are periodic. The costs also differ considerably together with annual increases.

Our firm is one of the few in Australian/New Zealand to have a specialist renewals department to manage global patent renewals. We ensure all renewal due dates are monitored and no deadlines are missed. We also keep up to date with the latest developments in rules and cost changes in each jurisdiction. We endeavor to provide our clients with competitive renewal rates.

Our firm provides expertise for renewals in Southeast Asia, in particular, Australia, New Zealand and Singapore.

Patents

Annual fees are due on or before the fourth anniversary of the filing date of the complete application for a standard patent (the second anniversary for an innovation patent), and annually thereafter. There is a 6 month grace period to pay the fees with increasing fines.

Designs

A renewal fee is due 5 years from the date of filing. This will extend the design for a further 5 years. There is a 6 month grace period to pay the fees with increasing fines.

Patents

Annual fees are due on or before the fourth anniversary of the filing date of the complete application for a standard patent, and annually thereafter. There is a 6 month grace period to pay the fees with fine.

Under the old New Zealand Act, renewal fees were paid at period intervals due on the fourth, seventh, tenth and thirteenth anniversary from filing, payable after grant. For pending applications filed before 13 September 2014, the date of grant will determine under which Act (either the old or new Act) the renewal fees are payable.

Designs

A renewal fee is due 5 years and 10 years from the date of filing (or its earliest convention filing date, if applicable). This will extend the design for a further 5 years. There is a 6 month grace period to pay the fees.

Patents

Annual fees are due on or before the fourth anniversary of the filing date of the complete application for a standard patent, and annually thereafter. The fees become payable once the patent has granted and any accumulated fees must be paid within 3 months from the date of grant. There is a 6 month grace period to pay the fees with increasing fines.

Designs

Annual fees are due on or before the fourth anniversary of the filing date of the complete application for a standard patent, and annually thereafter. The fees become payable once the patent has granted and any accumulated fees must be paid within 3 months from the date of grant. There is a 6 month grace period to pay the fees with increasing fines.

The patent terms in the jurisdictions listed below are subject to payment of annual renewal fees, otherwise referred to as maintenance fees or annuities.

The patent term in the jurisdictions listed below is 20 years from the filing date or international filing date. This may vary depending when the applications were filed. If you require specific details, please contact us.

Country Payable before grant Fees accumulated/payable from Grace period Fees based on
Indonesia No Payable 6 months from date of grant and accumulated annuities from the filing date, together with the annuity due within the year of grant (annually thereafter one month before the anniversary of the filing date). 12 months, 100% surcharge with request for extension filed at least 7 days before due date Number of claims
Malaysia No Payable 1 year from the date of grant with no accumulated annuities (annually thereafter on the anniversary of the grant date) 6 months with payment of fine. Fixed fee
Philippines Yes Payable 4 years from the date of publication (annually thereafter on the anniversary of the publication date) 6 months with payment of fine. Each claim in excess of five (5)
Thailand No Payable at grant and accumulated annuities from 5 years from filing date (annually thereafter on the anniversary of the filing date) 6 months with payment of fine Fixed fee
Vietnam No Payable at grant and no accumulated annuities (annually thereafter on the anniversary of the grant date) 6 months with payment of fine. Fine increases on a monthly basis. Number of independent claims
India No Payable at grant and accumulated annuities from 3rd year from filing date (annually thereafter on the anniversary of the filing date) 6 months with payment of fine. Fine increases on a monthly basis. Fixed fee

Key contact

Rebecca Carbarns

Rebecca manages the renewals requirements for local and overseas clients patent and design portfolios.

Rebecca provides timely reminders to clients regarding their payments and billings of renewal fees in Australia and globally, as well as portfolio reviews and quoting cost estimates for renewals.

With an Associate Diploma of Business in Office Administration from RMIT, and regularly undertaking training and development for her technical skills, Rebecca prides herself on delivering best practice initiatives.

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