Knowledge Base

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 KIPO, JIPO and SIPO respectively. RenewalsDesk Agents RenewalsDesk has relationships and pre-agreed pricing with…

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…

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…

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…

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…

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…

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…