A patent grants exclusive rights for an invention that offers a technical solution to a problem or gives a novel way of doing something. The invention could be in the form of a product or process. By virtue of these patents, the patent owners get the exclusive right to prevent or stop others from exploiting the patented invention commercially. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner’s consent.
In most Patent Jurisdictions in the World, like in Switzerland/Liechtenstein (CH/LI), the duration of the patent is 20 years from the date of filing a patent application, but if renewal fees are paid.
CH and LI have a special agreement for patents (not for trademarks and designs) that states that a patent of an invention filed in CH is automatically extended on the territory of LI and vice-versa. Remember that utility models do not exist in CH/LI.
In general, maintaining the patents IP is a complex task in terms of time, costs and resources required since the official patent offices in different countries have different procedures. However, the offices all have one thing in common they expect total accuracy in regard to how and when various operations will be undertaken, respect of official due dates, and correct payment of the relative amount in their local currencies.
The distinction between the terms “annuity fees“, “maintenance fees“, and “renewal fees” may appear to be rather confusing at first, but for those who work in the field, the difference is important and clear. “Annuity fees” or “annual fees” are those fees that are paid every year (it doesn’t matter if from the filing date or granting date). On the other hand, “maintenance fees” are those regular fees that must be paid in certain countries, such as in the U.S.A. (the term “maintenance fee” is used in their state law), and in Canada and China (where the patent laws refer to “maintenance fees” which are paid up until it is granted, after which they become “annuity fees“). However, for CH/LI, the term “annuity fees” is the most appropriate.
Therefore, to maintain a patent in CH/LI, the patent owner(s) or applicant(s) or their local representatives need(s) to pay in time the patent annuity, which has to be paid. Annuity is required right from filing an application every year throughout the patent’s life. The annuity for the first three years is paid upon filing the application. From year four, fees become due annually in advance. A three-month grace period is granted, but no official surcharge fee is expected for the first three years. For the last 3-months of the grace period is from the fourth till the deadline of the six-months payment, and an additional penalty official fees of CHF 50 is due. In other words, this official surcharge fee is only required and accepted from months 4-6 after the initial annuity due date. If the fee is not paid even after the extension period, then the patent privileges no longer exist unless a reinstatement may be filed.
Consequences of non-payment of annuity fee:
In some countries (including CH/LI), Patent Laws foresee reinstatement, also known as “restitutio ad integrum“. In other words, patents can be “brought back to life” within a certain clearly defined period, that varies from country to country, only when renewal payments are proved to have been missed due to “force majeure“, and that all necessary steps had been taken to avoid such a situation. In this case, you may contact Oriti Patents, based in Lugano, CH, to verify if possible or not and which are the relative costs.
The annuity payment has to be made before the Swiss Federal Institute for Intellectual Property, and thereafter the record for annuity payments is also maintained by them and visible at any time online in Swissreg.
Schedule of Annuity Fee:
|Year||Annuity Fee (in CHF)|
When it comes to the patent annuity process in CH/LI, one can get assistance from Oriti Patents, Lugano, CH. One can avail Franco Oriti help by filling in the form (it takes two minutes) in Patent Annuities.ch, enclosing the Power of Attorney in pdf (downloadable from said website) and paying a professional fee of CHF 45.00 per patent annuity.
Patent Annuities.ch offers a cost-effective, easy, transparent, multiple and secure online tool to make the patent annuity process easier for patent holders. It is not mandatory to submit a Power of Attorney, but if filled and enclosed, it will be sent to the Swiss Federal Institute for Intellectual Property so that Bern will advise in the future Oriti Patents. Taking over-representation for patent annuities in CH/LI is a free service of Oriti Patents.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.