TIPS^®  Taiwan Intellectual Property Special

The Notification on the Payment of Patent Annual Fee has Newly Changed

The IPO declared on December 31, 1999 that, it would cease all of the notification on the payment of patent annual fee since January 1, 2000. In stead, the IPO will only send the notification on the late payment of duplicate annual fee.

Article 85 of the Patent Law provides that: “The annual fee for an invention patent shall be payable commencing from the publication date. The Patent Authority shall, after the decision granting a patent right has become irrevocable, notify the applicant regarding the payment of annual fee for the first year within a specified time. Payment of the annual fee for each of the following years shall be made prior to the expiration of the current patent year.” Article 86 further prescribes that: “Payment of the annual fee for an invention patent may be effected by any person. In case the annual fee due is not paid within the regulatory period for payment of patent annual fee, it may be paid later within six months after the expiry of the above regulatory period provided that the amount of late payment shall be twice as much as the regular amount of the annual fee.” Article 70 (3) also provides that: “An invention patent shall extinguish, in case that the patentee has failed to effect the late payment of patent annual fee within the grace period for such payment.”

In principal, the IPO has no duty to send the notification to the patentees to remind them of the payment of annual fee. Yet, the IPO will graciously notify the patentee for the above obligation in the past. Given the fact that the distribution of notification in each year has become a burden. The IPO decided not to send the notification. In stead, the IPO will only send the notification on the late payment of annual fee, on the third month within the grace period of six months, to remind the patentee to make the duplicate late payment fee.