Decoding the Patent Annuity Maze

Published on 11 July 2016

Patent annuities (also known as maintenance or renewal fees) are an integral part of the patenting process and are required to keep a patent application or a granted patent in force. Patent annuities differ from one country to another not only in terms of the fee to be paid, but also the time as well as frequency of payment. For instance, some countries may require an annuity fee to be paid from the first year onwards, whereas the application fee may also include the annuity fee for a limited number of years in some other countries.

Let us consider a specification having 15 claims filed by a large entity, in the top twenty patent jurisdictions* in the world, excluding the EPO. An estimate of the total electronic annuity fees (official and associate costs) for twenty years payable in each country are depicted in Table 1. The estimates are split equally across three ranges: below $5,000, between $5,001 and $10,000, and between $10,001 and $15,000, with Saudi Arabia being the only exception.

In a majority of the countries, annuities are calculated from the filing date, with the exception of JP, KR, MY, and US. Except IL, MX, and US, annual payment is required in all other countries (Table 2).

Based on our in-depth research of patent legislations, we have observed that the annuities are dependent on the total number of claims in JP and KR. This research is reflected in our software in the form of questions that need to be answered by a user, such as “Number of claims for Japan.”

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Notes:

1. Annuity fees for the first five years are to be paid at the time of grant
2. First year annuity fee is to be paid at the time of filing
3. Annuity fees for the first three years are to be paid at the time of grant
4. If patent is not granted within three years, then the applicant can delay payment of fourth and subsequent year annuity fees until grant

Exchange Rates Used:

1 US Dollar = 1.34 Australian Dollars, 3.41 Brazilian Real, 1.28 Canadian Dollars, 6.56 Chinese Yuan, 3.86 Israeli New Shekels, 67.60 Indian Rupees, 104.48 Japanese Yen, 1,164.42 Korean Won, 338.53 Kazakhstan Tenge, 18.70 Mexican Pesos, 4.07 Malaysian Ringgits, 1.41 NZ Dollars, 64.12 Russian Rubles, 3.75 Riyals, 1.34 Singapore Dollars, 25.06 Ukraine Hryvnia, and 14.94 South African Rands.

*- Top twenty patent jurisdictions taken from WIPO’s World IP Indicators 2015