Glossary of Patent Renewal Terms

The world of patent renewals has a lot of unique and often confusing terms that are used. It’s important to understand what these refer to. Use this glossary to find definitions for the most common you’ll come across when you renew a patent.

If you’re ready to start renewing, get started with instant renewal quotations when you sign up for an account on our patent renewal service, here.

Contents

Claims
Divisional and Continuation Applications
Entity Types
Foreign/Local Agents
Late Grants
License of Right
Renewal Fee Payment Windows

 

Claims

What are claims and how do they affect renewals?
Overview
A patent consists of a list of technical descriptions that describe the invention. The first claim is usually general, with each subsequent claim becoming more and more specific until the invention is fully described. During the patent application process, it is not unusual for the patent office in question to ask for revisions to the claims so that the application does not conflict with existing patents. Your patent attorney will be able to advise on such matters. In general, the goal is to patent as general an area as possible so that competitors are inhibited in replicating your invention to the greatest extent.
Impact on Patent Renewal
In some countries, notably Japan and Korea, the number of claims in a patent will affect the renewal fee charged by the Patent Office. See the country fees guides for these countries for further information.

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Divisional and Continuation Applications

What are Divisional or Continuation Applications and how are they related to renewal fees?
Divisional Applications
A divisional patent application is a new patent application by an applicant (or applicants). It is based on an earlier patent or application and at least one of the new applicants must have been an applicant on the earlier application. It must be a new inventive step based on the claims of the earlier application. When the divisional application is submitted, a bundle of renewal fees must be paid. The total of the bundle is the sum of all renewal fees that would have been paid had the divisional application actually been submitted at the same time as the earlier original application. The renewal fees, as they are due on submission, will usually be managed by the engaged patent attorney. RenewalsDesk can provide assistance with calculating the level of fees due.
Continuation Applications
A continuation patent application is a new application also based on an earlier patent or application. It differs from a divisional application in that it is does not require an inventive step. That is, the new application is usually simply adding new claims onto those made in the former.
RenewalsDesk
The online RenewalsDesk system handles only standard renewals. To pay the first renewal bundle for one of the above types of application, contact care@renewalsdesk.com.

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Entity Types

What are entity types and how do they affect renewals?
Overview
In some geographies, such as the United States, Canada and France, it is possible to obtain discounts on the renewal fees charges by patent offices if the patent applicant conforms to certain criteria. For example in Canada, in general, small companies and universities are able to register as a Small Entity. In the United States, Micro Entities also exist - associated sole individuals. The registration of the applicant’s entity status with the patent office must usually be done early on in the application stage.
Further Information
Please refer to each country fee guide for further information and the applicable discounts.  

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Foreign/Local Agents

Information on foreign or local agent requirements.
Overview
Renewals can only be made to the patent offices of Korea, Japan and China through a local patent agent. There are certain requirements, such as the location of a service address within the country in question, or registration of agents with the patent office and other professional bodies that must be complied with. Further information can be found on the websites of the KIPOJIPO and SIPO respectively.
RenewalsDesk Agents
RenewalsDesk has relationships and pre-agreed pricing with selected, screened agents within each country.  

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Late Grants

What are late grants and how do they affect your patent renewal?
Late Grants
In the UK, if your patent was granted later than three years and nine months after the original filing date (or if the publication date of a patent granted through the EPO is after the same cut-off), it is considered as a late grant and special rules apply surrounding the first renewal payment.
Impact on Patent Renewals
The renewal window is pushed back so that a payment window of at least three months still exists, starting on the date of the grant, and ending at the end of the month three months later. If the patent application was made for a GB patent (as opposed to an European, EP, application), then no renewal fees were paid during the application stage. UK fees are due from the 4th anniversary of filing of granted patent. For late grants, the fees of all past anniversaries become due immediately. If the application was processed through the European Patent Office, then renewal fees will have been paid throughout the application, so there is no accumulation of historic fees due. RenewalsDesk takes late grants into account when calculating the renewal fee and payment window for you patent.

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License of Right

Licensing your patent and reducing renewal fees.
Application
In countries such as the UK and Germany, you are able to apply for a License of Right for a patent. If a patent is endorsed License of Right, you must be willing to grant anyone a license for the invention it protects. The patent offices police the granting of licenses if a patent holder is not conforming to the terms of License of Right. In the UK, applications can be made free of charge any time after the patent is published using patent office Form 28. Before you endorse your patent, RenewalsDesk advises that you discuss this with your patent agent.
Renewal Fee Reductions
A patent endorsed license of right is subject to reduced renewal fees. In the UK, renewal fees are halved. To benefit from the reduction in fees for a particular year, the application must be made at least 10 days before renewal.
Determining Current Status
RenewalsDesk can assist you with checking the current License of Right status of your patent. Email care@renewalsdesk.com.
Cancellation
A License of Right can be cancelled with the UK patent office at any time using Form 30 without any processing fee. However, the savings made on renewal fees during the period the patent was endorsed must then be paid.

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Renewal Fee Payment Windows

When are renewals due? Why is the due date not always the same as the last day payment can be made?
Official Due Dates
The official due date for patent renewal is often the anniversary of the patent filing date (the US is a significant exception - where it's the anniversary of the grant date). Fees are payable for the upcoming year (i.e. to pay for your patent to remain in force for a fifth year, the fee that corresponds to the fifth year must be paid by the fourth anniversary). The official payment date is often, however, not the final date a renewal can be paid (without incurring penalty fees).
Payment Windows
Payment window rules vary by country. For example, in the UK and Europe, fees can be paid (without penalty) up until the end of the month in which the official due date falls. The payment window is three months long. For further information, please refer to the patent renewal country guides in the Knowledge Base. The Self-Service online patent renewal tool takes account of each country's payment window rules.
PCT Applications at the European Patent Office
For Euro-PCT applications, the first application renewal fee due date is delayed until the end of the 31 month period after the application priority date should this fall after the usual first renewal deadline.
Late Grants in the UK
Please see the Knowledge Base article on Late Grants for further information on how payment windows are adjusted in the case of a late grant of a UK patent.

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