I Have a Patent. How Do I Continue to Protect It?

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Table of Contents

• Pay the Renewal Fees
• What Happens If You Forget to Pay the Renewal Fee?
• Enforcing Your Rights 
• Working and Marking Requirements
• Notify IP Australia of Changes
• Key Takeaways
• Frequently Asked Questions

So, you have done all the hard work of creating your invention and completed the complicated process of securing a granted patent. Now what? A patent comes with legal rights which you will need to protect. You must manage your patent so that your rights are adequately protected and enforced. Failing to maintain and manage your patent can waste all your hard work. This article explains how to protect a patent after registration.

Pay the Renewal Fees

If you want to keep your patent active, you will need to pay renewal fees. If you do not have a patent attorney, IP Australia will notify you about paying the maintenance fees. Standard and innovation patents require renewal fees to be paid to keep the patent in force. The costs are different for each type of patent. As the number of years from the filing date increases, so do the renewal fees.

You will need to pay renewal fees for a standard patent from the fourth anniversary of the filing date, and then every year after that. For an innovation patent, you need to pay the renewal fee from the second anniversary of the filing date and then every subsequent year up to the seventh anniversary. Innovation patents have a maximum term of eight years and standard patents have a maximum term of twenty years.

Pharmaceutical patents have a maximum term of twenty five years. A renewal fee is payable for the twentieth to twenty fourth anniversary. 

What Happens If You Forget to Pay the Renewal Fee?

If you forget to pay the renewal fee on or before the anniversary, do not panic. There is a six-month grace period after the anniversary. However, whilst you can pay the fee within the six month period, there is an extra charge for each month that the payment is late.

If you do not pay your fee within the six-month period, then your patent will lapse and you will lose your rights.

There are provisions to have a lapsed patent re-instated via an extension request to pay the renewal fees. However, the Patent Office will only grant these extension requests under very limited circumstances.  You would need to demonstrate that:

• the error or omission that led to the renewal payment not being made was due to exceptional circumstances beyond your control; and 
• it occurred despite you taking reasonable steps to ensure the payment was made. 

The Patent Office will request declarations in support of the extension request, and, in general, reasons such as financial hardship, not setting a reminder to pay the renewal fee or not knowing you had to pay the fee will not be accepted as “exceptional circumstances”.

It is important to pay your renewal fees on time to ensure that competitors do not take advantage of your patent after it lapses, on the assumption that you did not renew your patent on purpose. 

Enforcing Your Rights 

As the owner of a granted patent, you have the right to take action against those who infringe your patent. To determine whether your patent is being infringed, the infringing product or act will need to be assessed in light of your patent rights by a patent attorney. The patent attorney is then able to tell you whether the product is infringing, and if so, advise on the appropriate actions you can take against the infringer.  These may include:

• preparing cease and desist letters; 
• commencing court proceedings; and 
• negotiating an agreement with the infringer to allow them to continue using your invention in exchange for royalties.  

It is also important to note that the law does not permit a patent holder to intimidate a potential infringer with “unjustified threats”, so seeking professional advice is essential.

Working and Marking Requirements

A patent is an exclusive right but, unlike trade marks, there is no requirement for you to actually use or “work” (i.e. commercialise) your invention to maintain your rights. If you do commercialise the invention protected by your patent, it is advisable that you mark your goods or services with the details of the granted patent they relate to.  While this is not compulsory, failure to do so may adversely affect claims for damages against an infringer down the track. 

Notify IP Australia of Changes

You will need to notify IP Australia if: 

• you change address;
• the patent changes ownership; or 
• you grant a licence to another party.

Key Takeaways

Securing the patent for your invention is a great achievement. However, it is important that you use and maintain your patent wisely. You must make sure that you get the maximum protection from the patent by paying the relevant fees and keeping it up to date with changes.

Frequently Asked Questions