What you need to know about Annuity Payments in LATAM

Once you file an application, if you have to be very careful with the annuity payments and even more careful if you have register a patent in more than one country, since every country has different jurisdictions and procedures.

Therefore, BR Latin America does the ANNUITY PAYMENTS for you and a continually monitoring to your patents. The payment of maintenance fees, is a time consuming process for you, so we can help you with this. 

If your work with us it will be the minimum of work for you, and the maximum security for your IP rights. We will attend you under local law through our strong local network and the latest technology platforms to make it simple, professional and reliable. We have experts in the Intellectual Property Industry in more than 18 countries in Latin America, with all the right information we need to have successful procedures.

As said before, there are different requirements for each country in Latin America but a basic thing you need to know is that, in order to keep a patent in force or to maintain a pending patent application alive, you must pay the annual fees also called “annuities” or maintenance fees.

It is important to have in mind that the fees become higher as the patent ages and in some countries it is possible to revive the patent by paying a special surcharge to the government.

In Argentina, on November 19, 2003, the Argentine Patent Office issued a resolution, Rule P225, in an attempt to normalize the payment dates of annuities. The new resolution applies to all existing patents in force as of April 12, 2004. The effected types include regular and divisional patents, as well as importations and utility models filed prior to November 1, 1995 and received a 15 year term generating from grant date.

To keep an Argentinean patent in force, a maintenance fee is due in several times during the life of the patent:

• The first year to the third year
• The fourth year to sixth year
• From the seventh year, you have to pay every year, until the protection period is over

The failure to the pay an annual fee produces the expiry of the patent or patent application.

In Chile and Mexico, the annuities must be paid in advanced from the grant date, but with the difference that in Mexico you have to pay in periods of five years and they are counted from the presentation in Mexico or the international filing if it is the case.

The deadline to pay each annual fee in Mexico, is the last day of the month of the presentation or the international filing if it is the case. There is a grace period of six months from the due date, but you must pay an overcharge in order to obtain the patent rehabilitation.

In Panama the annuities must be paid from and during the application process and are counted from the presentation in Panamá or the international filing if it is the case. The deadline to pay each annual fee is the date of the presentation in Panama or the international filing if it is the case.

The annuities in Venezuela must be paid from and during the application process, and are counted from the first filing date and the deadline to pay each annual fee is the last day of the month of the presentation in Venezuela or the international filing if it is the case.

For annuity payments of Bolivia, Colombia, Peru and Ecuador an Andean Pact was made, settling that according to article 80 of Decision 486 of the Andean Community of Nations, to keep a patent in force or to maintain a pending patent application, as the case may be, an annual fee must be paid, determined by the national office of each country.

The deadline for the payment of each annual fee shall be the last day of the month of presentation of the invoice and two or more annual fees may be paid in advance. Annual fees shall be paid within a grace period of six months after the starting date of the corresponding annual period, together with the prescribed surcharge.

The patent or pending application shall remain in full force during the grace period and the failure to pay an annual fee, produces the expiry of the patent or patent application.

In Bolivia and Ecuador the annuities must be paid from and during the application process and are counted from the presentation or the international filing if it is the case and the deadline to pay each annual fee is the date of the presentation or the international filing if it is the case.

But their might be the case in Ecuador that the annuities must be paid in advance, and must be paid before the end of the month from the date of international application.

There is a grace period of six months after the starting date of the corresponding annual period in Bolivia, but you must pay an overcharge. The patent shall remain in full force during the grace period and the failure to pay an annual fee produces the expiry of the patent or patent application in that country.

On the other hand, in Ecuador you will also receive a grace period of six additional months but if the annuity is not paid within that period, the patent is automatically abandoned. It is not possible to revive a patent after its abandonment.

In Peru, According to the Single Text of Administrative Procedures (TUPA) of INDECOPI (the Supreme Decree 085-2010-PCM of August 19, 2010) says that the annuities must be paid from and during the application process and are counted from the first filing date. In Peru the deadline to pay each annual fee is the date of the presentation.

In case that a patent application enters in a National Phase according to the Patent Cooperation Treaty (PCT), for the payment of annuities, it will be taken into account the date of International filing of the PCT application. In this case, the payment will make in the date of the day presentation of the national phase for the current year, but taking as reference the international filing date.

There is a grace period of six months after the starting date of the corresponding annual period, but you must pay an overcharge. The patent shall remain in full force during the grace period.

 The annuities payments in Colombia must be paid in advanced from the grant date, but they are counted from the presentation in Colombia or the international filing if it is the case. The deadline to pay each annual fee is the last day of the month of the presentation in Colombia or the international filing if it is the case.

If you are planning on filing an application remember to have in mind all these requirements and that it is essential to have professional help in any legal procedure. If you have any further questions about these information or about any other procedure contact us, and we will provide the accurate service to your needs.