Failure to comprehend renewal fee dates thoroughly might have serious ramifications for patentees and design owners. If a renewal fee is not paid during the 6-month grace period following the renewal fee deadline, the patent or design will expire, resulting in the loss of rights to the invention.
If the failure to pay the renewal fee on time was inadvertent, you can ask for the restoration of the lapsed patent or design. Importantly, a person who began utilizing or practicing the invention during the lapsed period and continues to do so even after restoration will not be able to file actions or recover damages.
Understanding the renewal fee dates for South African patents and designs is so critical to ensuring that the rights continue to be valid.
The specific renewal fee deadlines for patents and designs are determined by a variety of criteria, and consequently, not all deadlines are computed in the same manner. Furthermore, the official costs owed are determined by the year of renewal. It is so critical to understand when a certain renewal charge is due and what the official fee for that renewal is. A knowledgeable South African patent practitioner will be able to help you with this.
Patents Renewal Deadlines in South Africa
The initial renewal cost for a patent is due on the third anniversary of the “filing date” of the patent application in issue, with further renewal fees due yearly afterward.
South African renewal fees, on the other hand, maybe paid at any time before the due date, even while the application is ongoing, albeit there is no duty to pay renewal costs until the patent is awarded. Renewal payments can also be paid in advance for a number of years, including the whole duration of the patent if desired.
If the application is filed as a national phase application under the Patent Cooperation Treaty (PCT), the first renewal is due on the third anniversary of the international filing date, unless the 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. Renewals after the first are due on the anniversary of the international filing date.
The first renewal for Paris Convention or non-convention patent applications is due on the third anniversary of the South African filing date, or on the date of issuance, whichever is later. Renewals after the first are due on the anniversary of the South African filing date. To avoid paying surcharges that become due immediately after the date of grant, it is recommended that renewals be paid in advance of the grant date, preferably between the time the patent application is accepted and the predicted grant date.
Designs Renewal Deadlines in South Africa
Renewal payments are due yearly beginning on the third anniversary of the “effective date” and continuing for the length of the design.
A registered design in South Africa may be filed in either Part A or Part F of the design registry. Part A of the design register is concerned with aesthetic designs for articles with features that are exclusively appealing to and assessed by the sight. Part F of the design register is concerned with functional designs for articles that include characteristics that are required by the function the piece performs. Aside from the aforementioned variations between aesthetic and functional designs, the lifespan of the designs differs in that an aesthetic design is valid for 15 years while a functional design is only valid for 10 years, which influences the term for which renewal costs are required.
There is a six-month grace period during which renewal payments may be paid late, subject to the payment of a fine or penalty for each month for up to six months, as is common in many other countries.
The term “effective date” thus plays an important role in deciding when renewal payments are required. The word “effective date” refers to the following for registered designs:
- 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.
As a result, yearly renewal costs will be required beginning on the third anniversary of the effective date and continuing for the length of the design.
In any of the preceding cases, a renewal fee, combined with the necessary surcharges, may be paid late, but only within the six-month period following the annuity due date. It is also critical to understand how renewal fee deadlines are calculated, and to hire an appropriately qualified Intellectual Property law company in South Africa when allowing an associate to pay renewal costs on your behalf.
You can find the list of South Africa IP Firms here.