An applicant should file for a patent and successfully follow through with a patent office’s examination to obtain legal protection. But this is not the endpoint of interaction with the patent office. Patents need to be renewed to survive.
Let’s consider the procedure for maintaining a patent in force.
A patent gives an owner the exclusive right to use his new technical solution, i.e., the right to restrict others from copying and commercially exploiting the patented product or technology for a limited time on a specific territory.
The Russian patent law establishes the following validity periods for patents: twenty years for inventions; ten years for utility models; five years for industrial designs.
However, there are two peculiarities. First, the protection term of an invention related to a drug, pesticide, or agrochemical, which may be used only after receiving a special permit, can be additionally extended.
Second, an industrial design patent’s owner can claim to expand protection for the next five years but no more than twenty-five years in total. In this case, it is necessary to pay a fee for the entire subsequent five-year period.
Let’s turn back to the patents for the inventions and utility models. The issuance of a patent does not mean that it will automatically be valid for the whole period specified by the law. Fees must be paid annually.
If a maintenance fee is not transferred within the prescribed period, a patent will lapse. The above means that a patent owner will lose a monopoly on a technology or product. He will not be able to prohibit copying thereof and enter into license agreements anymore.
Judicial opinion
Annual fees for a patented invention are paid from the third year. This provision has a potential risk for the patentee that sometimes comes into reality.
First сase
When we talk about the utility models, the situation is somewhat simpler. Utility models must be maintained from the first year of validity, and annual fees are also required each year.
Second сase
In summary, the duration of a patent is limited. Taking advantage of the patent monopoly during this period requires regular and timely payment of maintenance fees. If a company has a few patents, it should keep a close eye on them as they are key business assets. The termination of even one patent may lead to significant risks for the company’s growth and development. Increasing the patent portfolio requires implementing a systematic approach and using suitable software products and (or) services.
Let’s consider the procedure for maintaining a patent in force.
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A patent gives an owner the exclusive right to use his new technical solution, i.e., the right to restrict others from copying and commercially exploiting the patented product or technology for a limited time on a specific territory.
The Russian patent law establishes the following validity periods for patents: twenty years for inventions; ten years for utility models; five years for industrial designs.
However, there are two peculiarities. First, the protection term of an invention related to a drug, pesticide, or agrochemical, which may be used only after receiving a special permit, can be additionally extended.
Second, an industrial design patent’s owner can claim to expand protection for the next five years but no more than twenty-five years in total. In this case, it is necessary to pay a fee for the entire subsequent five-year period.
Let’s turn back to the patents for the inventions and utility models. The issuance of a patent does not mean that it will automatically be valid for the whole period specified by the law. Fees must be paid annually.
If a maintenance fee is not transferred within the prescribed period, a patent will lapse. The above means that a patent owner will lose a monopoly on a technology or product. He will not be able to prohibit copying thereof and enter into license agreements anymore.
Judicial opinion
- As the Russian Constitutional Court has repeatedly noted, a regulation that allows early termination of a patent due to non-payment of fees "indicates the legislator’s desire to maintain in force only those patents that have actual or potential value" (rulings Nos. 497-O and No. 504-O of March 5, 2014, No. 3203-O of December 20, 2018, etc.).
Annual fees for a patented invention are paid from the third year. This provision has a potential risk for the patentee that sometimes comes into reality.
First сase
- A company has applied for a patent for an invention. The examination was quick — the patent office issued a decision to grant in just five months. The applicant paid the registration fee but deferred paying a fee for the third year. After some time, the company asked a patent attorney to audit its intellectual property, who found that the specified patent could be lapsed due to non-payment of the first annual fee.
When we talk about the utility models, the situation is somewhat simpler. Utility models must be maintained from the first year of validity, and annual fees are also required each year.
Second сase
- When registering a patent for a utility model, a company paid both the first and second years of its validity. Unfortunately, the above did not save the patent owner from missing the deadline for paying the annual fee in the future. A few years later, the company was preparing documents for a competition and was surprised to find that the patent had expired. Fortunately, it was not so late to restore the patent. However, the company incurred the cost of paying additional official fees and patent attorney fees to solve the problem.
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In summary, the duration of a patent is limited. Taking advantage of the patent monopoly during this period requires regular and timely payment of maintenance fees. If a company has a few patents, it should keep a close eye on them as they are key business assets. The termination of even one patent may lead to significant risks for the company’s growth and development. Increasing the patent portfolio requires implementing a systematic approach and using suitable software products and (or) services.
