Notice of 20 July 2020
Information for IP right owners and applicants having financial difficulties in paying annual, maintenance, extension and renewal fees due to the COVID-19 pandemic
The spread of the coronavirus has led to restrictions on public life throughout Germany, which can pose economic difficulties for IP right owners. If, for this reason, proprietors of patents, utility models, designs and trade marks are not able in individual cases to pay annual, maintenance, extension or renewal fees in time, an IP right may lapse.
Annual fees for patents, maintenance fees for utility models and maintenance and extension fees for registered designs
- After the expiry of the time limit for payment not subject to a surcharge for late payment (until the expiry of the second month following the due date), you can pay annual fees for patents and patent applications, maintenance fees for utility models and maintenance fees for registered designs together with a surcharge for late payment of 50 euros per IP right within a grace period of four months, i.e. until the expiry of the sixth month following the due date at the latest (section 7 (1) sentences 1 and 2 of the Patent Costs Act).
- The extension fee for registered designs must be paid within 30 months from the date of filing or priority (section 7 (2) of the Patent Costs Act, section 21 (2) of the Design Act).
- Please note that the DPMA cannot extend time limits specified by law (including the statutory time limits for payment). However, the DPMA draws attention to the option of a re-establishment of rights (see Notice of 10 March 2020).
- If, in view of your financial situation due to the COVID-19 pandemic, you are not able to pay your annual, maintenance or extension fees, you can, under certain conditions, submit a request for legal aid (sections 129 et seq. of the Patent Act; section 21 (2) of the Utility Model Act in conjunction with sections 129 et seq. of the Patent Act; section 24 sentence 1 and sentence 3 of the Design Act in conjunction with sections 114 to 116 of the Code of Civil Procedure). This also applies if you can pay your fees only in part or by instalments. You must demonstrate, and may be required to substantiate, that the requirements for legal aid (especially your personal and financial situation) are fulfilled by using form A9541.
If you submit a request for the grant of legal aid before the expiry of the time limit for the payment of a fee, the expiry of such time limit will be suspended (section 134 of the Patent Act; section 21 (2) of the Utility Model Act in conjunction with section 134 of the Patent Act; section 24 sentence 4 of the Design Act in conjunction with section 134 of the Patent Act). If the request for legal aid is rejected, the time limit applies again one month after the receipt of the relevant decision. Information on legal aid is available in the "Information on Legal Aid Before the German Patent and Trade Mark Office" (Merkblatt über Verfahrenskostenhilfe vor dem Deutschen Patent- und Markenamt (A 9540)) .
- Information on the reduction of your annual fees by making a binding declaration of your willingness to grant licences concerning your patent or your patent application pursuant to section 23 (1) and (6) of the Patent Act is available in the "Information for Patent Applicants" (p. 13, item 3.) .
Renewal fees for trade marks
- After the expiry of the time limit for payment not subject to a surcharge for late payment, you can pay the renewal fee and any class fees for trade marks within a grace period of six months after the expiry of the term of protection (section 7 (3) sentences 1 and 2 of the Patent Costs Act). The surcharge for late payment is 50 euros for the basic fee and 50 euros for the class fees for the fourth class and each additional class.
- If, in view of your financial situation due to the COVID-19 pandemic, you are not able without any fault on your part to pay renewal fees for trade marks within the grace period, a later payment, together with a re-establishment of rights, is possible if the following requirements are fulfilled:
- When your financial situation permits it, you must pay the renewal fee plus the surcharge for late payment and file a request for re-establishment of rights within two months (section 91 (2) and (3) sentence 1 of the Trade Mark Act).
- Upon filing the request or in the proceedings concerning the request, you must substantiate that, without any fault on your part, you were not able to observe the grace period (section 91 (3) sentence 2 of the Trade Mark Act). In the case of financial difficulties caused by the pandemic, you must demonstrate that you got into financial difficulties due to measures taken in view of the COVID-19 pandemic (e.g. long closing of your business ordered by the authorities, considerably reduced turnover/sales) and that, despite your efforts to receive financial support (e.g. request for state aid), you were not able to pay the renewal fee within the grace period of six months. It is necessary that you disclose your financial situation to the DPMA. For the purposes of substantiation, the DPMA can request different documents and affirmations in lieu of an oath.
- A re-establishment of rights is possible only if your request has been filed and the renewal fee and the surcharge for late payment have been paid within one year after the expiry of the time limit not observed (section 91 (5) of the Trade Mark Act).
Further information is available in the "Guideline for the Examination of Trade Mark Applications and the Keeping of the Register" (Richtlinie für die Prüfung von Markenanmeldungen und für die Registerführung) (pp. 29 to 30, item 4.).
Last updated: 20 July 2020