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IP Cases & Commentary – Details

25 March 2010

What is the Effect of a Granted Patent?

Once a patent has granted, rights under the patent are enforceable.   These rights have a limited life span. Furthermore, specific acts must be carried out to keep the patent in force.  These issues will be discussed below:

What is the term of a patent?

Typically, the patent term is twenty years from the date of filing. The date of expiry is generally either the end of the day preceding the 20th anniversary of the filing date or at the end of the day of the 20th anniversary of filing. For example, in the UK, it is the former.  So, a UK patent filed on 18 March 2001 would expire at midnight on 17 March 2021.

However, under certain circumstances the duration of patent protection may be extended.

In European Economic Area (EEA) member states (EU member states and Norway, Liechtenstein and Iceland), for certain subject matter (i.e. medicinal products and plant protection products) the duration of protection may be extended by a Supplementary Protection Certificate (SPC). SPCs were introduced to partly compensate for the reduced effective term of patent protection for inventions that require marketing approval.

SPCs are filed separately at the national patent offices of each country and, if granted, come into force after the national patent has expired (i.e. exceeded the full 20 year term).

The term of the SPC is calculated as the period between the filing of the patent and the date of first authorisation in the EEA minus 5 years, subject to a five year cap.  Hence, SPCs, in combination with the patent, aim to provide 15 years of marketing exclusivity for the specific product covered by the SPC.

Further, if the active ingredients have paediatric uses, under certain circumstances the SPC may be extended by a 6 month period.

Similar provisions are available in the US.  Further, US patents may be eligible for a patent term extension based on delays during prosecution by the US Patent and Trademark Office.

For information on whether or not your patent can be extended by a SPC and details on how to apply for an SPC please contact your usual advisor at D Young & Co.

How is a patent kept in force?

Once a patent has granted fees must be paid to the national patent office(s) to keep the patent in force. These fees are generally called renewal fees, maintenance fees or annuities.  The fees are typically paid around each anniversary of the date of filing.   In the UK the fees can be paid at the end of the month containing the anniversary of the filing date.  The fees increase year by year and vary from country to country.

The fees increase over the lifetime of the patent to try to ensure that a patentee only keeps commercially useful patents alive, i.e. so as not to hinder commercial activities with patents that are not being exploited. Thus, it is important that active management of a patent portfolio is carried out to ensure money is not being wasted on patents that are not being exploited.

Not all countries require a payment every year.  For example, in the US, fees are due 3.5, 7.5 and 11.5 years from the date the patent is granted.

If a renewal fee payment is missed, most countries have a grace period in which the renewal fee, in combination with a surcharge, may be paid.  For example, in the UK the grace period is 6 months from the due date of the fee payment.

Even if the renewal fee and surcharge are not paid within the grace period, under certain circumstances it is possible to get the patent restored upon application.  The requirements for restoration vary from country to country.  However, restoration can be difficult unless action is taken as soon as possible. Hence, local professional advice should be sought as a matter of urgency if renewal fee payments have been missed.

Renewal fees are also generally due for the period encompassed by an SPC.  In the UK the fees for the entire period encompassed by the SPC must be paid as a single cumulative amount in order for the certificate to come into force.  If the single total fee is not paid, the SPC is treated as not taking effect.  However, in France, for example, fees are paid annually during the SPC period.

What happens if a patented invention is not exploited?

Most EU countries have post-grant working requirements, although these do vary from country to country.  Post-grant working requirements are a means of preventing abuses that might result from the exercise of exclusive rights.

The working requirements are typically applied: (i) when a third party has failed to obtain a licence under reasonable terms and has applied to the relevant national authority for intervention, or (ii) in times of national emergency, for example, a war or an epidemic.

Typically, the invention must be “worked” or “sufficiently worked” (i.e. demand is being reasonably met) within a period of three years from grant to comply with the requirements.

The penalty for failure to work an invention is generally the granting of a compulsory licence (i.e. a licence where the patentee’s permission is not required) to the third party or the government. The patentee will still receive a licence fee for the compulsory licence, which may be set by a court decision.

However, in some countries the patent may be deemed to have lapsed if not worked or sufficiently worked within the requisite time period.

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