The exciting world of patent maintenance fees (part 2)

Dear all, here I am again!

You probably did not have enough enlightment with The exciting world of patent maintenance fees (part 1), available here. So let me quench your thirst for wisdom with its second part!

In part 2 I would like to talk about how fascinating and FUN maintainance fees are for us, Formalities Officers, particularly when informing clients about them. Is this one of the most underestimated tasks in the IP administration world? Well, it might be... But, which FO has never woken up in the middle of the night worring about having paid a last minute maintenance fee? Not me!

With so many jurisdictions you get extra fun

As much as patent jurisdictions love harmonization, the only common thing that countries have about maintenance fees is that they exist.

To begin with, there is not a single way to call these fees: the EPO likes to call them Renewal fees, while the USPTO calls them Maintenance fees. New Zealand for instance likes to call Renewal fees for fees you pay for a GRANTED patent, and Maintenance fees for the fees you paid while the patent application is PENDING. And other countries like to call them Annuity fees because you normally pay them every year.

So when talking to a client about these fees, it might be that you are calling them with different names and different moments, even if you are talking about the same thing. And maybe your client will get a bit confused.

Differences of course do not stop with the name of these fees.

The time limit to pay this fee also varies among jurisdictions. For instance, EPO countries allow to pay the fee until the last day of the month of the anniversary of the filing date of the EP patent (understanding this sentence gives you automatically a Master in Patent Administration), but in some countries (AU, CA, NZ for instance) the time limit will be the actual date of the anniversary.

So when a patent is granted in multiple jurisdictions and you need to calculate when to inform a client and when you should receive instructions from your client, sometimes you are walking on thing ice. The client can object to receive information too soon, or too late.

Another interesting difference is that renewal fees are not always to be paid every year. In most jurisdictions are, but in US and MX, for instance, you pay every 5-7 years. So, if you receive a call from a client worrying that his / her US patent has dissappear from the renewal fee schedule of this year, now you know why.

There is no consensus either about which should be the first year to pay maintenance fees. Some countries will make you pay from the first year, so upon filing, some others, from 3rd year, some only when the patent is granted. Again, the same worried client can argue that he has validated his / her brand new EP granted patent in some countries that do not appear in the list. For instance, in Austria you only need to pay maintenance fees from the 6th year onwards, while in Germany from 3rd year onwards, always from filing application.

In any case, no matter how many differences are among jurisdictions, at the end it all comes to the same conclusion: if you pay a renewal fee, you have extended the life of your patent (application) until the next payment is due. Or, putting it more blantly, if you do NOT pay a renewal fee, your patent will lapse.

This payment must be done IN ADVANCE. Which means that if an application was filed on 2020, in 2022 you will have to pay the maintenance fee for the third year, even if this is the second year of your patent application.

Communication with clients

Because of all things explained, it might be difficult to talk to clients about maintenance fees. Not only because they might not expect them, but also because maintenance fees for the same patent family are most likely to be paid at different times. The key question is of course how much information is appreciated before a client says "Ok, TMI!"

I guess there is a thin line between what a client want to know and how much information the client can digest.

What intrigues me the most about maintenance fess and communication with the client is how many times I can remind a client about his duty to pay a fee. Or, to express it more bluntly, how many times can I send emails or call a client to get his final instructions before being considered a stalker?

When can I consider my duty to be fulfilled, if I have not received instructions from a client, and the due date is approaching? Because no instructions means no payment, and no payment means no patent. Maybe the client has inadvertently deleted email, or they came in the SPAM folder? Maybe his phone was disconnected because he went of holidays and (of course) forgot all about the maintenance fees?

There is not right or wrong question for this, and every law firm / IP department has its own strategy. But, as a rule of thumb, the closest we get to a due date, the more insistent we need to be to get the client's instructions of what to do. And even if most of us do not like to make calls, sometimes the easiest and fastest way to reach a client is actually to call her.

Check Check and CHECK instructions received and processed

It might seem obvious to say this, but it is always advisable to have client's instructions in writing. And if instructions were given by phone, it is always advisable to confirm client's instructions via email, so we have some written proof.

It is advisable to check and double check instructions received from a client. Actually, not only advisable, but most jurisdictions require that double checks are constantly performed in the patent world. So, whenever you perform an act on behalf of a client, someone in your department needs to check that you have done what your client wants you to do.

A client would not complain if, by mistake, we pay a maintenance fee without his explicit instructions. But, what about if we receive instructions to abandon a patent "by non-payment of the maintenance fee"? In this case we are receiving instructions to not perform an act!

Abandonment of a patent (application) is a delicate issue that deserves an article in itself (reminder mode ON) but I would just like to mention here that big mistakes can come not only for overlooking instructions from a client, but from acknowledging these instructions in the wrong patent case, and then forget about the case. Mistakes in patent prosecutions are normally noticed when it is too late to remedy, so it is always important to have double checks (or even triple sometimes) procedures in place.