Renewals and Extensions

At Maxwells, we can manage your IP portfolio, which may include providing to you a schedule for payment of patent renewal and maintenance fees to incorporate into your business plan. It is part of our normal service to inform you well in advance when renewals are due and the associated costs for you to decide if a patent case is to be renewed. Renewals are due annually starting with the fourth year, in the case of a standard patent application, or with the second year in the case of an innovation patent application. A patent case will lapse if a patent renewal fee is not paid by a given deadline, which means that there will be no longer any patent protection for the invention and others may be able to exploit or copy the invention.

Extensions of Time

Extensions of time to do certain relevant acts required under the Patents Act 1990 to be done within a certain time can be obtained under certain circumstances. If, for example, a renewal fee is not paid by a required date, and the failure to pay the fee was unintentional, a late extension of time to pay the fee may be sought. The application for the late extension of time must set out the grounds and the circumstances under which the extension is sought and lodged without undue delay.

Circumstances that will be accepted include:
  • An error or omission by IP Australia or the International Bureau of WIPO
  • An error or omission by an applicant or attorney
  • Circumstances beyond the control of the applicant
  • Circumstances where, in spite of due care being taken by the applicant, the applicant still could not carry out the required act by the required date, such as when the applicant has reasonable procedures in place to perform that act.

Financial difficulties or misjudging the time differences are not acceptable circumstances.

A Declaration must be completed detailing the circumstances why the required act was not done by the required date.

Maxwells’ patent attorneys can help you meet renewal and other deadlines and ensure prompt action if a deadline is missed. We are experts in IP portfolio management, so talk to one of our attorneys to see how we can be of service.