As reported previously, the Registered Patents and Biotechnological Inventions (Bailiwick of Guernsey) Regulations, 2012 came into effect on 1 March 2012, and from that date, it has been possible to reregister granted patents from a broad range of designated jurisdictions.

We have just learnt that the Guernsey Intellectual Property Office (IPO) is now requiring renewal fees to be paid under the terms of the new law, although we note that the new law does not appear to specify the precise requirements for such renewals. We believe, following discussions with the IPO, that renewal fees are to be paid annually, on each anniversary of the base (e.g. UK) patent's filing date that falls after 1 March 2012.

For example, for a reregistration patent based on a UK patent with the following details:

UK filing date: 6 August 2000
Local filing date in Guernsey: 5 May 2006
First renewal fee due: 6 August 2012 (13th annuity)

A grace period is provided for in the law for the late payment of annuities, although it is not clear of the number of additional months that are available. 

We understand that the Registrar intends to write to us on each of our patent cases to notify us of the renewal fees that are now due for payment. We will let our clients know on a case-by-case basis when we know which fees are payable.

The new law also provides for a patent term equivalent to that of the base (EP) UK patent (i.e., normally 20 years from the filing date of the base patent) - previously, the term of patents was only 16 years from the filing date of the base patent. It is not clear from the law whether this new term applies to all patents, or only e.g. those granted after 1 March 2102, and we are currently awaiting clarification of this point.

We are currently liaising with our colleagues in Guernsey and the Registry there, to establish the renewal fees which are payable under the new law and to which patents the new 20 year term applies, and we will write to you again when we have received this clarification. However, please check your own records in order to identify any cases which are no longer of interest to the proprietor and/or those cases which should be kept in force if renewal fees are now payable.

In the meantime, should you require any further information in this regard, please do not hesitate to contact us.