Patent Renewals in India: The Complete Guide to Patent Annuity Payments
Introduction :
Securing a patent is an important goal, but patent protection is not evergreen. Patent holders are expected to abide by renewal rules to protect their interests throughout the prescribed period of the patent.
An understanding of the patent renewal rules in India is critical to startups, inventors, researchers, MSMEs, enterprises, and businesses with valuable technology portfolios. Failure to adhere to the renewal deadline can result in a patent becoming void, thereby losing the intended commercial protection for the invention.
According to section 53 of the Indian Patent Act, the default term of a patent is 20 years from the date of filing, subject to the provisions of the Act. An Act further provides that a patent may cease to have effect in the absence of payment of the prescribed renewal fee within the required period or in case of an extension.
This report explains patent renewal fees (also known as patent annuity payments), key dates, the procedure for maintenance of patent rights, and loss of patent protection.
What is Patent Renewal Fee?
Patent renewal fees are payments made to the Indian Patent Office to maintain the protection awarded to a patent.
According to Rule 80 of the Patent Rules, 2003, patent renewal fees are payable at the end of the second year of the patent grant and each succeeding year. The renewal fees are expected to be paid in the prescribed time before the provisions of the year lapse.
In terms of operational function, patent holders require a system that can:
identify patent numbers
determine filing dates
identify grant dates
show renewal dates
set payment reminders
indicate renewal extension dates
confirm payments
record ownership/address data
When a company has multiple patents, tracking all of the dates is difficult and tedious. A well-organized patent docketing system will help eliminate the risk of missed deadlines.
How Long Does a Patent Last in India?
Knowing Patent Durations
In India, according to Section 53 of the Patents Act, an Indian patent has a 20-year term from the date of filing the patent application. For PCT applications designating India, the term is generally effective from the international filing date.
The 20-year term of a patent does not also mean the patent holder can ignore the patent renewals.
Section 53 says, with certainty, that a patent ceases in its effect if the renewal fee is not paid within the prescribed time or, where applicable, within the extended time.
Therefore, in order to maintain a patent, both the following are necessary:
staying within the statutory term of a patent; and
satisfying the renewal payments.
When are Annuity Payments Due?
According to Rule 80, renewal payments are due at the end of the second year from the date of patent grant and at the end of each succeeding year. Renewal payments may be extended up to six months in accordance with the Rules upon making the required request and paying the stated fee.
Further provisions address the situation of a patent granted more than two years after the filing of the application. According to section 142, some fees that became payable during the intervening period may be paid within the period specified after the recording of the patent, including an applicable extended period.
Since deadlines may vary depending on the patent and the particular history of the case, it is advisable for patent holders to check the relevant date and the current version of the rules, rather than relying on a generic calendar.
Can Renewal Fees Be Paid in Advance?
Yes.
According to rule 80, renewal fees for several years may be paid in advance. Additionally, the rules contemplate a further reduction of the renewal fees when the fees are paid electronically in advance for the required minimum period.
For a business that wants to simplify the administration of its patent portfolio and reduce the number of individual payments, advance payment may be useful.
However, companies should keep accurate records even when several years are paid together.
Step-by-Step Process for Patent Renewals in India
Step 1: Review the Patent Portfolio
Prepare a list of all granted Indian patents and mark down the following for each patent:
Patent number
Application number
Filing date
Date of grant
Current owner
Relevant renewal year
Next payment due date
Current status
Step 2: Determine the Relevant Renewal Date
The renewal date should be determined from the patent filing and grant history.
Note that the grant date, in isolation, is not necessarily indicative of the renewal date.
Step 3: Review Current Fee and Rules
Methods and costs related to patents are subject to change. The Indian Patent Office publishes Patent Rules and Fees, so it is the user’s responsibility to confirm any requirements before completing a payment. The Patent Office currently publishes the Patents Rules, 2003, with amendments made up to 15 March 2024.
Step 4: Make Payment
The year of renewal should be entered with the patent information & the renewal fee should be paid to the Patent Office, as per the prescribed procedure, for the renewal.
Step 5: Retain Proof of Payment and Update Record
The relevant payment receipt should be retained & the company’s IP docket should be updated.
Retention of the payment receipt of renewal of patent is important in the following instances:
Investor Due Diligence
Licensing
IP Audits
Acquisitions
Patent Portfolio Assignments
Litigation
What Occurs When a Patent Renewal is Not Made?
A missed payment can cause severe inconvenience.
As per Section 53, a patent loses its effectiveness with the lapse of the prescribed renewal period. This is called a lapsed patent.
The legal framework provides means for consideration and grant of an application for restoration of some lapsed patents.
Restoration of Lapsed Patents in India
Is a Lapsed Patent Always Lost Forever?
Not necessarily.
Section 60 allows the patentee or legal representative to make application for the restoration of a patent that has lost its effectiveness due to non payment of a renewal fee.
The application must be made within 18 months of the patent’s expiration date. The application must also include the reason the renewal fee was not paid.
According to Rule 84, the application for restoration is made in Form 15.
What Does the Controller Look at?
According to Section 61, the Controller’s decision revolves around whether the omission to pay the renewal fee was unintentional and whether there was an unnecessary delay in making the restoration application.
A restoration application may also be opposed by persons on the basis of the grounds and in accordance with the Act. Rule 85 provides for a period within which notice of opposition has to be published after the restoration application has been made.
Therefore, restoration of a patent is not immediate.
What Happens Following Restoration of a Patent?
If restoration is granted, the renewal fees and any additional fee is required.
It is possible that a patent, having been restored, may attract protections for third parties who, during the period, when the patent ceased to be in force, either used or made contracts for the use of the invention.
Which Is Especially Vital To Have A Prompt Opinion When An Important Patent Lapses.
Who Can Benefit from Professional Patent Renewal Services?
Startups
- Startups creating innovations and building patent portfolios gain value from centralized patent renewal management.
Inventors
- Inventors who are creating innovations and monetizing their patented inventions can rely on patent renewal services for ease of mind.
Innovators
- Innovators are inventors and in that respect, use patent renewal management services for renewal management the same way inventors do.
Researchers
- Researchers who get technology rights can also centralize their patent renewal management through patent renewal services.
MSMEs
- MSMEs which are short on internal IP resources also gain by centralizing and outsourcing patent renewal management.
Enterprises
- Enterprises which have a large patent portfolio rely on patent renewal services.
Product teams
- Product teams which rely on patented technology can centralize their patent renewal management.
Companies
- Companies which maintain their Indian patent rights rely on patent renewal services for ease of management of their patent portfolio.
Companies in Bangalore – and other Companies in India – rely on centralized patent renewal management.
The First Renewal-Management Steps
- Patent Certificate
- Patent Number
- Application Number
- Filing Date
- Grant Date
- Current Ownership
- Evidence of Payment for Renewal
- Receipts for Previous Payments
- Communications with the Patent Office
- Assignments and Ownership Change Records
- Restoration Documents (Where Applicable)
For a lapsed patent, all the rest of the documents will be needed.
Common Mistakes
- Manual tracking of deadline dates
Without professional centralized patent renewal management, spreadsheet tracking of due dates becomes unreliable when a company has more than a few hundred patents to manage.
- Grant Date vs Filing Date
The due date for renewal may be tricky as it can depend on whether the patent was filed or granted first. Using the wrong date can be a common mistake.
- Overlooking the Extension Period
Just because there is an extension, still do not assume the patent will be renewed. The extension provisions must be checked.
- Assuming a Lapsed Patent Can Always Be Restored
If a patent has lapsed, there are also statutory provisions which must be examined to see if the non-renewal was done intentionally or was done due to excess neglect.
- Failing to Maintain Payment Records
Missing documentation may pose challenges during due diligence, license transactions, ownership transfers, or other IP deals.
Advantages of Professional Patent Renewal Assistance
Staff limit champions and do your best to manage the following to optimize your renewal processes:
Track renewal deadlines
Audit your patent portfolio
Coordinate renewal payments
Partner payment status verification
Keep records of payments
Assess lapsed patents
Restore patents
Organize your IP portfolio
Coordinate renewals for your international patent portfolio
Professional renewal management services are most needed for businesses with operations spanning multiple countries due to the varying renewal mandates and deadlines in different countries.
Professional patent compliance services are a great way for Bangalore-based startups and businesses to let their founders and product teams focus on product commercialization, while patent compliance concerns are delegated to the experts.
Why Choose MakeMyPatent?
Backed by its 21+ years of patent experience, MakeMyPatent provides an expert-led platform for IP services.
MakeMyPatent offers patent filing, patent drafting, AI-based patentability searches, drawings, and responses to Patent Office objections for patent hearings, trademark protection, copyright protection, and IP legal services and other international patent services.
Its services utilize expert counsel, confidentiality, the right amount of strategic depth, AI-powered workflowPatent compliance services, and IP intelligence.
MakeMyPatent can assist your Indian patent maintenance, review and develop a lapsed patent, and extend a patent portfolio and IP strategy.
Frequently Asked Questions
- What do you mean by patent renewals in India?
Patent renewals are payments made to the Patent Office at certain intervals to keep a patent in force. According to Rule 80 of the Patent Rules, renewal fees are due at each of the intervals.
- How many years does a patent remain valid in India?
Filing a patent application grants the right for 20 years, provided the Patent Act is not contravened. Failure to pay the renewal fees will cause the patent to lapse before the end of this period.
- Can the renewal fees in India be paid in advance?
Yes. In accordance with the Patent Rules, advance payment of annual renewal fees is allowed, provided the rules and the applicable fee are met, as well.
- Can a lapsed patent in India be restored?
A lapsed patent may be restored in accordance with Section 60 of the Act if the lapsed patent fulfills the Act’s requirements. The application must be made within 18 months of the date the patent ceased to have effect, and reasons must be given for the failure to pay the renewal fees.
- If the deadline is missed for patent renewal, what happens?
Missing the deadline to pay the renewal fee will cause a patent to expire. There are circumstances in which restoration may be a possibility, but it is not guaranteed.
Contact Us to Manage Your Patent Renewals
Managing patent rights post-grant is a continuous and ongoing process. It involves timely payment of patent renewal fees, accurate record keeping, and a strong system to manage deadlines.
Patent renewals are of paramount importance for startups, MSMEs, researchers, innovators, and businesses operating from Bangalore and any other part of India as they help in proper IP portfolio management reduce the risk of an administrative breach.
To manage your IP portfolio and to ensure seamless patent renewals, contact us. Our team has years of experience in patent drafting, filing, renewals, and various other IP protection services.
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Disclaimer: This blog provides general educational information only and does not serve as formal legal counsel. Please address your specific invention or IP requirements directly with a registered patent professional.