Under the old Patent Law, if a patent holder failed to pay annuities for 3 consecutive years, the patent was deemed void only from the last date of the third year and the annual fee during that three year period remained payable.
Therefore, if a patent holder abandoned the patent (by not paying annuities) and did not actively inform the Patent Office to cancel the patent, the patent was void only after 3 years and the patent holder owed the Patent Office unpaid annuities for that 3 year period.
This is an old issue that was very frustrating to patent owners and this issue is no longer present under the current Patent Law. However, the Patent Office still continues to try to recover the old outstanding debts, with past deadlines for payment being extended.
Impact: Suspension of new applications
The Patent Office has threatened to not process any new applications until outstanding amounts have been paid. Although there is no legal basis under the Patent Law, the Patent Office has now started issuing formal letters of suspension for new applications of those who have outstanding annuities payable.
Depending on the stage of the new application, this effectively means that the Patent office will not proceed to issue a formalities report or publish the application.
If you have received a suspension letter, we recommend checking with the Patent Office to understand if the outstanding annuities have been paid. Unfortunately, the only way to lift the suspension of new applications is to resolve any outstanding annuities.
If you have any questions, please contact us.