Patent maintenance fee

A buyer of a technology business may be buying patents that lapse unless their fees were kept up. Recording a transfer is a different step: see patent assignment registration. For register searches, see how to search the trademark and IP registers before buying a brand.

How the Act works

Under section 46 of the Patent Act, if a prescribed fee is not paid by the prescribed date, the late fee must be paid and the Commissioner sends the patentee a notice. The term is deemed to have expired if the fee and late fee are not paid before the later of six months after the prescribed date and two months after the notice. Subject to the regulations, section 46(5) treats that result as never having happened if the patentee, within the prescribed time, makes a request stating the reasons for the failure and pays the fees, and the Commissioner determines the failure occurred in spite of the due care required by the circumstances having been taken; section 46(6) lets the Federal Court still declare the term expired in the cases it lists. Under section 113(a) of the Patent Rules, the prescribed date for a fee under section 112(1) is the anniversary date for which it is paid; section 113(b) sets a different date for a fee under section 112(5).

What to ask

• Which anniversary the last maintenance fee paid covers, and whether a late fee was needed.
• Whether the Commissioner has sent a notice under section 46(2)(b), or the term has been deemed to have expired.
• Whether each right is an issued patent or still an application, whose fees arise under section 27.1 of the Act.