Recent changes in patent annuity payments
The Directorate of Patents of the Costa Rican PTO has recently reviewed and reinterpreted the provisions of the Regulations to the Costa Rican Patent Law 6867 regarding patent annuity payments. The main changes are as follows:
- The first annuity for PCT applications corresponds to the first year of the international application, and not to the first year of the national application, as established before by the Costa Rican PTO.
- After grant, the Costa Rican PTO will issue an official requirement indicating the accumulated annuities that must be paid and the deadline to proceed with the payment (two months from the notification of grant). If the annuities are not paid, a six-month grace period will be granted, with a 30 percent surcharge.If the annuities are not paid even after the six-moth grant period, two ten-day office actions will be issued requiring the corresponding payment plus applicable interests.
- Even though it is still not clear how the non-payment of annuities fees would affect a patent, it is advisable for the patent holder who has lost interest in a patent in Costa Rica to file a formal abandonment letter before the Costa Rican PTO. Otherwise, even though the patent is passively abandoned, the patent holder will still have the obligation to pay the unpaid annuities and the PTO will maintain the protection of the patent. In filing the formal abandonment, the corresponding patent should be free from outstanding annual fees, or else the PTO will reject the filing of formal abandonment.
- Patent annuities paid under the scheme initially implemented by the Costa Rican PTO are deemed to be properly paid and the term of the patent will not be affected.
In 2014, the Decree 38308-JP, amending some of the articles of the Regulations to the Costa Rican Patent Law 6867, entered into force.Regarding patent annuity payments, the regulations stated that they were required only after grant and only for applications filed from April 25, 2008, and that the payment of the first annuity was made together with the patent certificate issue fees. Additionally, the Regulations clarified that accumulated annuities from the filing date were due within two months after the granting date, and subsequent annuities must be paid before the commencement of the relevant year of life and the deadline was the last day of the anniversary month of the filing date.
Finally, the Regulations established that, if an annuity was not paid in due time, a six-month grace period would be granted, but the amount would include a 30 percent surcharge over the amount prescribed.
Should you require any further information, please contact us. We will keep you updated regarding any further developments on this matter.