Renewal Management for IP Portfolios

The legal framework

A registered right stays in force only as long as the renewal or maintenance fee is paid on time. The rules differ per right, so a portfolio spread over several types and countries has many renewal dates.

Trademarks

An EU trademark is registered for ten years from the filing date. Renewal can be requested and paid in the six months before expiry. After expiry a further six months are available, with a surcharge (Art. 53 EUTMR). The renewal date falls on the last day of the month in which the filing date anniversary occurs. Renewal may be requested for only some of the goods and services, but goods cannot be added.

Benelux trademarks follow a similar logic under the Benelux Convention on Intellectual Property: ten years, renewable, with a period before expiry and a short period of grace in which renewal is still possible with a surcharge. International registrations under the Madrid system are renewed at WIPO every ten years, and the holder pays in respect of each designated state.

Designs

Registered EU designs are renewed every five years, up to a total of 25 years, with a six-month period before expiry and a grace period of six months with a surcharge.

Patents

Fees for a European patent application are paid to the EPO each year from the third year after filing until grant (Art. 86 EPC). After grant, renewal fees are paid in each validated state under national rules, which differ in amount, due dates and grace periods. For a Unitary Patent, one annual fee is paid to the EPO. Where a fee is paid late, a grace period of six months with a surcharge applies for European patent applications (Rule 51(2) EPC). Lapsed rights can sometimes be restored, but only on strict conditions and not in every country.

Domain names

Domain names are renewed with the registrar for the period you pay for. Missing a renewal can lead to loss of the name and its capture by a third party, with a risk to your website and e-mail.

Misleading invoices

Offices do not usually send binding reminders, and the courtesy notices some of them send do not create a right to a reminder. Owners of registered rights regularly receive invoices from private companies that look official and ask for payment for entry in a "register". The EUIPO and national offices warn against these. A genuine renewal is paid to the office itself or through your attorney, which is why a managed docket protects against both missed dates and misleading invoices.

In practice

A Mechelen technology company holds 25 trademark registrations, 8 European patent families and several domain names. In January its attorney sends a renewal proposal covering everything falling due in the next six months. Each right is shown with its due date, the cost and a recommendation. The company reviews the proposal and decides:

• Renew the EU trademark for its core product name in all classes.
• Renew the same mark in Class 9 and Class 42 only, and drop Class 35, in which it no longer operates.
• Let the registration in a market it left lapse.
• Maintain the patent in Germany and France, and abandon the validation in a smaller country where nobody has used the patent and the fee increases every year.

That is a typical outcome. A patent maintained everywhere because nobody asked whether it still matters costs more each year, as annual fees rise over the life of the right. A sensible policy asks for each right: is it still used or planned for use, does it protect revenue, does it deter infringers, is it needed for a deal or a licence, and what does it cost to keep?

Our portfolio and renewals system prepares the proposals in batches per client, and the IP cost estimator puts the cost next to each right. You give your instructions through a secure link, and you can see the same overview in the client portal.

Frequently asked questions

How early should I plan renewals?

Prepare the proposal at least three to four months before the due date. That leaves time to decide, to collect evidence of use, to check ownership records and, if needed, to file a new application instead of renewing.

What if I miss the date?

Check whether a grace period applies. For EU trademarks and designs and for European patent applications there is one, with a surcharge. Once it runs out, the right lapses. Some rights can be restored, but not all, and not in every country.

Can I renew only part of a trademark registration?

Yes. You can limit the renewal to some goods and services, which saves fees if there are class-based charges. You cannot add goods.

Do renewal fees change?

Yes. Official fees are adjusted from time to time, and in some patent systems the annual fee rises every year. Estimates are therefore indicative until paid.

How this connects

Renewal management is a core part of IP portfolio management, which turns the rules above into a calendar and a decision process for your rights.