How Do I Maintain My Patent?

As the owner of a patent application or a granted patent, it is your responsibility to ensure that it remains valid. Most importantly, you will need to pay renewal fees for the lifetime of the patent for it to remain in force. If you do not pay these renewal fees, your patent or patent application will lapse. This article sets out four tips to help you maintain your Australian patent or patent application.

1. Pay the Annual Renewal Fees

As a patentee, you are required to pay renewal fees to the Australian Patent Office at certain times throughout the lifetime of the patent. The renewal fees and deadlines to pay the fees will depend on:

• the type of patent or patent application you have (i.e. standard or innovation); and
• how many years have passed since the official filing date of your complete application.

Usually, the fees are due on or before the anniversary of the filing date of your complete application. The complete application is generally the application you file after the provisional application. This may be an international PCT application or an Australian standard patent application. The table below sets out the current annual renewal fees for a standard patent or patent application.

Standard Patent Renewals

If you have a standard patent, the first renewal fee will be due on the 4th anniversary of the filing date of your complete application. This is regardless of whether the patent has been granted yet. 

After the first fee is due, renewal fees are due at each anniversary of the filing date until the patent expires.

Innovation Patent Renewals

For innovation patents, you must pay renewal fees from the 2nd anniversary of the filing date of your application. Renewal fees are due at each anniversary after that until the 7th anniversary, as innovation patents are only valid for 8 years.

The easiest way to pay your annual renewal fees is through IP Australia’s online services. If you pay online, renewal is effective immediately.

If you do not pay your renewal fee by the due date, you will still be able to make a late payment for the next six months. However, you will be required to pay a late fee of $100 for each month that the payment is late.

If you fail to pay the renewal fee and any late fees due by the end of this six month grace period, then your patent will lapse. If this occurs, it will no longer be valid. However, it may be possible to revive your patent in some cases by requesting an extension to pay the renewal fee. You will need to demonstrate that the non-payment of the renewal fee was due to:

• an error on your part (as the patentee) or on the part of your patent attorney; or
• circumstances beyond your control.

The extension will be granted at the discretion of the Commissioner of Patents.

2. Ensure Your Patent Details Are Up to Date

It is crucial to keep your patent details up to date to ensure that your patent remains valid and you do not miss any important information. You should contact the Australian Patent Office if, for example, you:

• change your name, address or contact details;
• change the agent (e.g. patent attorney) for your patent;
• give or sell your patent to another person; or
• license the rights of your patent to another person.

The simplest way to change or update your details is to submit a request through IP Australia’s online services.

3. Act Promptly if You Suspect Patent Infringement

The Australian Patent Office is not responsible for monitoring potential infringement of your patent. As the patentee, it is your right and responsibility to:

• defend your patent against infringement; and 
• take action if you discover that it is being used without your permission.

4. Consider Your International Patents

If you have been granted a patent in other countries, then you must maintain these as well. Like Australia, you will need to pay renewal fees in each country. However, the fees and due dates of the payments will be different in each country. 

For example, the fees may be payable:

• only after the patent has been granted; or 
• while the patent application is pending, as well as after the patent has been granted.

Most countries also provide a six month grace period to pay your renewal fee in addition to any late fees. 

Key Takeaways

If you have successfully obtained a patent, it is now your responsibility to maintain it. You should do this by:

• paying the annual renewal fees;
• keeping your patent details up to date;
• acting promptly if you suspect someone is infringing on your patent; and
• paying the renewal fees in other countries for any international patents.

If you do not properly maintain your patent, you run the risk of losing it. If you have any questions or need assistance with managing your patent, contact LegalVision’s patent lawyers on 1300 544 755 or fill out the form on this page.