by Jeremy Ben-David, Managing Partner, JMB Davis Ben-David

For those who receive our notices reporting completion of patent examination and issue fee due, you may have noticed that we have added a cautionary note with respect to the timing of the first, ‘post-grant’ renewal fee.

A good thing about renewal fees in Israel is that they are only payable after grant, and even then, only once every four years. A tricky aspect of this however, is that the first renewal fee, which covers years 1-6 (calculated from the effective date of filing) is due for payment 3 months after grant. The reason that this is tricky is that by definition, it is not a date that can be automatically calculated based on the date of effective filing, as it is entirely dependent on the date of grant.

The way that we phrase this in our report is as follows:

“The 1-6 year and 7-10 renewal fees will be payable three months after the date of grant. So that we can mark our records accordingly, kindly confirm whether we will be responsible for attending to the payment of these Fees. 

“Based on our experience, renewal services generally will not pay the post-grant

renewal fee and other accumulated renewal fees, if any. Please contact your renewal service to ascertain the situation and instruct us accordingly.”

 

Because of the basis for determining the due date for payment of the post-grant renewal fees, and the fact that some renewal payment companies are either not set up to check the due date and/or may expect the applicant to inform them of grant, we underline this with the following Cautionary Note.!

As the date of grant is the trigger for the due date for the post-grant renewal fee, even if

your renewal service is able and willing to pay it, and even if you have given them standing instructions for them to make all renewal fee payments, it is imperative that you actively advise them of a) the date of grant and b) the due date for payment of the post-grant renewal fee.”

 

This is NOT a reason not to use renewal companies. It is however a reason why most of our clients, both in Israel and overseas, request that we handle payment of the post-grant renewal fees, if only for their own peace of mind!

More Posts You May Find Interesting