Failure to have a thorough understanding of renewal fee deadlines can have dire consequences for patentees and design owners. If a renewal fee is not paid within the 6 month grace period after the renewal fee deadline, the patent or design will lapse with a concomitant loss of rights to the invention.
If the failure to pay the renewal fee timeously was unintentional, it is possible to apply for restoration of the lapsed patent or design. Importantly however, it will not be possible to institute proceedings or recover damages from a person who commenced using or exercising the invention during the lapsed period, and continues to do so even after restoration.
Having an understanding of the renewal fee deadlines of South African patents and designs is thus essential to ensure that the rights remain in force.
The particular renewal fee deadlines for patents and designs are dependent on a number of factors, and thus all deadlines are not calculated in the same way. Further, the official fees due also depend on the year of renewal. It is thus essential to understand when a particular renewal fee is due, and what the official fee for that particular renewal is. A qualified South African patent practitioner will be in the best position to assist with this.
Renewal fees are payable annually from the third anniversary of the "effective date" onwards, for the remaining duration of the design.
In South Africa, a registered design may be filed in any one or both of Part A and Part F of the design register. Part A of the design register relates to aesthetic designs for articles having features that appeal to and are judged solely by the eye. Part F of the design register relates to functional designs for articles having features necessitated by the function the article performs. Apart from the aforementioned differences between aesthetic and functional designs, the duration of the designs also differ in that an aesthetic design is valid for a period of 15 years with a functional design valid for a period of 10 years only, which consequently affects the term for which renewal fees are payable.
As also prevalent in many other jurisdictions, there is a six months grace period during which the payment of the renewal fees may be made belatedly paid subject to the payment of a fine or surcharge respectively for each month up to 6 months.
In determining when renewal payments are due, the term "effective date" thus plays a key role. For registered designs, the term "effective date" relates to:
- the date of filing of the application in South Africa; or
- the priority date in the case of a convention application; or
- the release date (date on which the design was first made available to the public) of the design, whichever date is earliest.
Thus, the annual renewal fees will fall due annually from the third anniversary of the effective date onwards, for the remaining duration of the design.
For patents, the general rule is that the first renewal falls due on the third anniversary of the "filing date" of a patent application in question with subsequent renewal fees due annually thereafter.
However, South African renewal fees may be paid at any time in advance of the due date, even while the application is pending, although there is no obligation to pay renewal fees until the patent is granted. If desired, renewal fees can also be paid for a number of years in advance, including for the full term of the patent.
Where the application is filed in terms of the Patent Cooperation Treaty (PCT) as a national phase application, the first renewal falls due on the third anniversary of the international filing date unless grant occurs 33 months or more after the international filing date, in which case the due date for the first renewal or any accumulated renewals, is extended to a date six months after the date of grant. Subsequent renewals are due on the anniversary of the international filing date.
For Paris Convention or non-convention patent applications, the first renewal falls due on the third anniversary of the South African filing date, or on the date of grant, whichever is the later date. Subsequent renewals are due on the anniversary of the South African filing date. In order to avoid payment of surcharges, which become due immediately after the date of grant, it is advisable that renewals be paid in advance of the grant date, and at least between the time acceptance of the patent application is received and prior to the expected grant date.
Divisional Patent Applications
Divisional applications divided out of PCT national phase applications are ante-dated to the international filing date of the PCT parent application. The first renewal therefore also falls due on the third anniversary of the international filing date of the parent application but the 33 month rule does not apply to divisional applications. Thus, if a renewal fee is not paid on the divisional application by the third anniversary of the international fling date of the parent case, then any renewal fees must be paid before grant of the divisional to avoid extension fines.
As mentioned above, divisional applications must be ante-dated to a date not earlier than the date on which the parent application was filed. Divisional applications divided out of Convention applications are ante-dated to the filing date of the South African application that claims priority from an earlier application filed in a Paris Convention country. In the case of non-convention applications, the same principle applies in that the divisional patent application is ante-dated to the filing date of the South African application. The first renewal fee pertaining to these divisional applications then falls due on the third anniversary of the filing date of the South African patent application, provided the parent application has already been granted.
Full Term Renewals
South Africa is one of the few countries that allows renewal fees to be paid more than 6 months in advance such that it is possible for the patentee to pay all patent renewal fees pertaining to the full term of the patent in question.
As the official fees pertaining to patent renewals are likely to increase throughout the lifetime of the patent, it may be beneficial for the patentee to attend to payment of renewal fees for the full term of the patent due to the associated cost saving benefit. The patentee will also save on the professional fees of the Intellectual Property law firm in South Africa that attends to the renewal payment on the patentee's behalf. Other benefits associated with such upfront payment include eliminating the risk of the patentee missing a renewal deadline thereby ultimately ensuring the patent remains in force as well as eliminating the administrative duties involved with arranging and attending to the renewal payments.
The upfront payment of the renewal fees for the full term of the patent may in certain instances be detrimental to the patentee in that should the patent no longer be commercially viable to the patentee and the patentee elects to abandon the patent, the upfront payment of the renewal fees will essentially constitute a financial loss with this probably being the major disadvantage in attending to the payment of renewal fees upfront.
As is the case with patents, renewal fees for designs can be paid in advance both for more than one year ahead or for the whole period of the duration of the design should the applicant or proprietor desire. The above benefits and drawbacks associated with the upfront payment of renewal fees for the full term of patents are also equally applicable to designs. However, care should be taken when attending to the upfront payment for the full term of designs in that aesthetic designs are a valid for a term of 15 years whereas functional designs are valid for 10 years thereby ensuring that the upfront payment is for the correct term.
In all of the above instances, a renewal fee may be paid belatedly along with the prescribed surcharges, but only during the six months period following the annuity due date. It is thus imperative to be aware of the manner in which renewal fee deadlines are calculated, and to ensure that you make use of an appropriately qualified Intellectual Property law firm in South Africa, when entrusting an associate to pay renewal fees on your behalf.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.