Managing your granted patent

Term of a patent
Generally, the term of a patent is 20 years from the date of filing, subject to renewal. This is true even when the patent application was filed with a claim to priority from an earlier-filed application (i.e. the term of the patent is 20 years from the filing date not the priority date – for patents derived from PCT patent applications, it is the international filing date of the PCT application and not the date of national phase entry).

Although not strictly speaking a patent term extension, in specific circumstances we can obtain supplementary protection certificates to provide similar protection of your rights beyond the patent term. These certificates are available for pharmaceuticals and plant protection products (and methods of their manufacture), and are awarded as compensation for the long time delay in getting these products to market caused by the need to obtain regulatory approval. Such certificates come into force once the patent expires and generally has a maximum life of five years (five and a half years in some case relating to approval for paediatric use).

Renewal
We renew patents to keep them in force. In most countries, this requires paying an annual fee to the local patent office. The fee is due by the anniversary of the filing date and can usually be paid a couple of months or so in advance. There are exceptions though, most notably the USA where renewal fees are due three and a half, seven and a half, and eleven and a half years after the date of grant.

Many countries impose a sliding scale of renewal fees that see the fee amount increase year after year. This reflects the principle that monopolies are not usually in the public interest, and so discourages long term monopolies. It also reflects the fact that in the later years of the patent term, the patented product or process ought to have generated sufficient revenue to pay the increasing fees.

Many countries provide a grace period in which we can validly pay the renewal fee after the renewal date has passed. Typically, the grace period lasts for six months and requires a punitive surcharge which may be a flat fee or may increase the later into the grace period it is paid.

Sometimes we can restore patents where renewal fees have not been paid during the normal grace period. This usually requires explaining why the renewal fee was missed as most patent offices will apply a standard to be met if restoration of the patent is to be allowed. The most common standards are that the renewal fee was missed despite all due care having been taken and that missing the renewal fee was unintentional.

Challenges to your patent
Patent law recognises the right of third parties to be able to challenge the validity of a patent, for example because they believe the patent office made a mistake in granting the patent or because the third party is aware of prior art not known to the patent office that they believe shows some or all claims to lack novelty and/or inventive step.

There are different ways the validity of your patent may be challenged. Some patent offices provide a mechanism for challenging a patent once it has granted, and some even provide a mechanism for challenging your patent application before it gets to grant. For example, the European Patent Office provides a 9 month period for third parties to file an opposition to the grant of your patent. Alternatively, challenges to the validity of your patent may be filed through national (or regional) courts.

When we defend your patent, the procedure is largely similar to the examination process of your patent application, but with the challenger raising objections and the patent office or court mediating and offering their opinion and ultimately their decision. As with examination of a patent application, there is usually an opportunity to amend the patent to ensure it meets all the requirements for patentability. For example, claims may be combined to narrow the scope of the broadest claims to overcome new prior art found by the challenger.