Maintenance of intellectual property

Intellectual property such as patents, trademarks and designs have great economic and commercial value for their owners, and in order to maintain the rights conferred by the registration of the company’s intellectual property assets, care must be taken to maintain their validity and renew their registration according to law

Patent renewal in Israel

Registering a patent in Israel gives it protection for 20 years from the date of filing the application for patent registration, however, in order for the protection to be in effect, it is necessary to extend its validity and pay a patent renewal fee. In the first stage, from the moment the patent is registered, it is valid for only 3 months, after which the renewal fee must be paid and its validity extended for a period of 6 years from the date of submission of the registration application. At the end of the 6 years, the patent must be renewed and a renewal fee must be paid every 4 years, up to the ceiling of the 20 year period. In addition, it is also possible to extend the validity of the patent in advance to 20 years by paying an increased fee.
The validity of the patent will be updated in the records of the patent certificate.
It is important to know that the patent registrar is not obligated to send renewal reminders before the patent expires, and the responsibility for renewing a patent falls on its owner. Many cases are known in which patent owners received fraudulent letters from imposters allowing them to transfer the patent renewal fee to them, so that it would not expire. Due to these cases, and due to the great importance of safeguarding the company’s intellectual property assets, it is highly recommended to use a patent attorney and/or an intellectual property lawyer who specializes in the field, who will know how to guide you on the matter and ensure that your patents will be renewed as required.
In order to avoid these scams, it is recommended to verify with an intellectual property lawyer / patent attorney whether this is a genuine notice about the need to pay for a patent renewal or whether it is an attempted fraud.

Patent renewal abroad

In order to maintain the validity of patents registered abroad, they must be renewed and renewal fees must be paid, from time to time, in accordance with the laws established by each country. If the validity of the patent has expired – it will not be possible to enforce the owner’s rights against those who have improved the patent, although, in cases Under certain conditions, which vary from country to country, it is possible to renew the validity of an already expired patent, as long as not too long a period of time has passed.
Patent renewal in the USA – In the USA, the validity of the patent is 20 years, during which there are 3 renewal dates:
First renewal – 3.5 years from the date of patent registration. The fee can also be paid up to six months later plus a late fee. If the renewal, including the extension period, is not paid, the patent will expire.
Second renewal – 7.5 years from the date of patent registration. The fee can also be paid up to six months later plus a late fee. If the renewal, including the extension period, is not paid, the patent will expire.
Third renewal – 11.5 years from the date of patent registration. You can also pay up to six months later plus a late fee. If the renewal, including the extension period, is not paid, the patent will expire.

Renewal of trademarks

The validity of a registered trademark is not limited in time, but in order to maintain the validity of the registration, between the fifth and the sixth year from the date of registration of the trademark, a declaration of use (DECLARATION OF USE) must be submitted, including proof of use, and a fee must be paid. This can also be done for six months, plus a fee.
After that, the trademark must be renewed before the end of the tenth year from the date of registration, including a declaration of use with proof of use and payment of a fee. The registered trademark must be renewed once every 10 years.
After the renewal request is approved, its owner will receive a notification of this from the Trademark Registry, and at the same time a notification of its renewal will be published on the Internet.
It should be emphasized that the responsibility for renewing the trademark registration falls on the owner of the mark, and if he does not submit the renewal request on time, the trademark registration department will send him a written reminder. If the mark is not renewed and half a year has passed since its expiration, its validity will expire, the mark will be deleted from the registrar’s register, and the registrar will announce this publicly in a message on the Internet. If the sign is a month after its expiration date, late fees will also be added to the renewal fee, for each month of delay.
After the trademark expires, the trademark registry can be requested to renew its registration, provided that a year has not yet passed since its expiration.
It should be noted that in addition to renewal, the trademark registry can also be requested to make changes to the registration of the mark, including corrections to the owner’s details and other changes. It is also possible to request the cancellation of the registration of the mark.

Renewal of designs (models)The validity of a registered design is five years from the date of submission of the registration application. The validity of the registration can be extended, subject to the payment of a renewal fee, for four additional periods of five years, which means that the validity of the design registration is up to 25 years in total.
The renewal request for designs must be submitted within the 3 months prior to their registration expiration date. After the expiration date of the design registration, it can be renewed as long as the renewal request was submitted during the 6 months following its expiration date, and subject to the payment of a renewal fee and a late fee for each month of delay.
The validity of a registered sample is fifteen years from the date of registration and there is no need to pay a renewal fee.
As a leading firm in the field of intellectual property, Dr. Mark Friedman’s firm has expertise and extensive and diverse experience of over 30 years in editing and registering thousands of patents, trademarks, designs and models in Israel and worldwide. We provide a professional and responsible roof for all aspects related to the protection of intellectual property, including strict on renewing patents, trademarks, designs and models in a timely manner, in order to maintain their validity. It should be emphasized that it is of crucial importance to renew the validity of the intellectual property assets in time, before their validity expires, but at the same time, our office also provides the best solution for cases in which the validity of the intellectual property It has already expired, and its renewal must be discussed with the appropriate registrar.

*The aforementioned in this article and on the website in general should not be considered as legal advice and the things written in it should not be considered as a substitute for individual legal advice, but a personal opinion and/or a general explanation only. Of course, you should not rely on and/or act in accordance with the above without individual legal advice from an attorney

For any questions on this topic, contact us