IP Lifecycle Management

The legal framework

Intellectual property rights are not permanent assets. Each has its own term, conditions for keeping it, and ways in which it can be lost. Managing a portfolio means knowing those rules for each right and acting at the right moment.

Stage 1: creation and identification

Copyright, database rights, trade secrets and unregistered designs arise without registration. Other rights need an application: patents, trademarks, registered designs and domain names. The first decision is whether to protect a creation at all, and by which right. For patents, timing is critical because public disclosure before filing destroys novelty. Finding the IP you already have deals with this stage.

Stage 2: protection

Filing choices follow: which right, which territory, which route. A priority period lets you extend a first filing to other countries: 12 months for patents and designs and six months for trademarks under the Paris Convention. After filing come examination, publication and registration, and for trademarks the opposition period.

Stage 3: maintenance

Most rights must be renewed or kept alive by paying fees. The principal terms are as follows.

• EU and Benelux trademarks: ten years from the filing date, renewable for further periods of ten years without limit.
• Registered EU designs: five years, renewable in five-year periods up to 25 years.
• Patents: up to 20 years from filing, with annual fees. A European patent application pays fees to the EPO until grant, after which national fees fall due in each validated state, or a single annual fee for a Unitary Patent.
• Copyright: the life of the author plus 70 years, with no renewal.
• Domain names: registered for a period fixed by the registry and renewable.

Trademarks also have a use condition. If an EU trademark has not been put to genuine use in the EU in connection with its goods and services for a continuous period of five years after registration, it can be revoked (Arts. 18 and 58 EUTMR). Benelux trademarks follow a similar rule. Evidence of use therefore belongs in the file well before anyone asks for it. Renewal management for IP portfolios and managing your IP deadlines deal with this stage in detail.

Stage 4: exploitation

Rights can be licensed, assigned, pledged or enforced. Changes of ownership and licences should be recorded in the relevant registers, since for some rights they affect third parties only once recorded. Enforcement decisions, such as opposing a later mark or suing for infringement, also belong here.

Stage 5: end of life

A right ends by expiry, by non-renewal, by deliberate abandonment, by revocation or invalidation, or by use that makes a mark generic. A well-managed portfolio ends rights on purpose. A right that no longer protects anything should not be renewed, and goods and services can be removed from a trademark at renewal, though not added.

In practice

A Kortrijk fashion company has 60 trademark registrations in 20 jurisdictions. Several date from product lines that have been discontinued, and in two countries the company never sold anything. At each renewal date, the company has a choice. For the marks that protect current lines in active markets, it renews. For the discontinued ones, it lets them lapse and saves the fees. For marks in markets it may enter, it keeps the registration but starts to collect evidence of use before the five-year point.

Business events should trigger a review as well as dates. A product launch calls for a clearance and filing check. A market entry calls for a coverage check. A restructuring calls for a check on who owns each right and whether the registers say so. A sale of the company calls for a clean list of rights and their status, which a managed register produces in one step.

Cost runs through every stage. Our IP cost estimator projects the renewals ahead, and the figures are visible to you in the client portal, where you can give your instructions.

Frequently asked questions

What happens if I forget to renew a trademark?

For an EU trademark there is a grace period of six months after the due date, with a surcharge. After that the registration expires and can only be recovered by filing a new application, which does not carry the old priority date.

Do I have to use my registered trademark?

You do not have to use it from day one, but after five years without genuine use it becomes vulnerable to revocation on request of a third party.

Can I add goods when I renew a trademark?

No. You can restrict the list at renewal but not extend it. A new application is needed for additional goods or services.

Does copyright need renewing?

No. It lasts for the life of the author plus 70 years in the EU, without registration or renewal.

How this connects

Lifecycle thinking is the basis of IP portfolio management, which applies these stages to your portfolio and follows each date.