17 Apr 2020

Restoration of Lapsed Patents: An Indian Patent Perspective

Introduction

Patent is granted for a term of 20 years from the date of filing of a patent application. Once the patent gets granted, the patentee need to ensure about the payment of renewal fee pending every year. The patentee should always keep a note of the deadlines and track it in order to ensure that patent remains in force. In situations where renewal fee has not paid with in a prescribed period, the patent may be lapsed (Section 53(2)) & then the patentee need to apply for restoration of lapsed patent under specific conditions.

Section 53(2) states “A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed”.

Patent Renewal Fee

The renewal fee as applicable as per Indian Patent Act and should be paid before the expiration of the 2nd year from the date of patent in respect of THE 3rd year. Thereafter, renewal fee should be paid before the expiration of every succeeding year. However, this period may be further extended by 06 months more by applying extension of time.

In cases where the patent gets granted after completion of 02 years from the filing date of patent application, then the maintenance fee need to be paid within 03 months from the date of recordal of grant in the register of patents. Also, it may be further extended for a duration of not more than 09 months from the date of recordal of grant of patent in the patent register.

Patent not Renewed on time / Patent Lapsed

If the patentee does not submit the renewal fee at Indian Patent Office (IPO) within the prescribed period and also do not pay renewal fee within the extendable period of 06 months by applying extension of time, the patent thereafter ceases to have effect or that patent gets lapsed from the date of expiration.

In cases where any individual/ company do not pay renewal fee, the patent may thereafter get lapsed or ceased to exist. The patent and the subject matter covered in the patent thereafter will come into public domain and not protected. The subject matter of the concerned patent may be used by any person without any fear of infringement. Further, the lapsed patent may be restored within 18 months from the date of lapse.

How to apply for Restoration of Lapsed Patents

The Patent owner or the legal representative of the patent can apply for restoration of lapsed patents  in a prescribed manner. In few particular cases, where the patent had been filed by two or more persons jointly, then with the leave of the Controller, one or more of them, without joining others, may submit the application for restoration at Indian Patent Office (IPO) within 18 months from the patent cessation date (Section 60(1)).

A one-month extension may also be availed under Rule 138 of Patent Rules, which is a discretionary power of the Controller.

Section 60: (1) “Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within that period as extended under sub-section (3) of section 53, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent”

(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.

A petition needs to be applied regarding the restoration of lapsed Patents at IPO. Here the patentee needs to submit reason, circumstances and evidences under which there was delay in payment of the renewal fee. The restoration is accepted by the Controller once he/she gets convinced with the reasons, evidences & circumstances submitted by the patentee for justifying the delay in paying renewal fee was intentional. Thereafter the application for restoration is then published in Patent Official Gazette (Rule 84(3)).

The application for restoring lapsed patent should also be accompanied with a statement explaining the circumstances under which failure of non-payment of the renewal fees was done. The additional fees should also be submitted with proof or evidences to prove that the delay was not intentional. The patentee may also prove that there has been no undue delay in filing for restoration. The Controller thereafter if required, may call for further proofs like-evidences, which may comprise of letters, deeds etc. Thereafter, after getting satisfied with grounds/evidences submitted by the patentee, the Controller of patents may pass the application for restoration of lapsed patent and then the controller may pass order for publication of the restoration of the patent in the IPO / Patent Journal. The publication would be  open to public inspection regarding  oppositions for 02 months duration starting from the date of publication of application of restoration of lapsed patent.

In the matters where oppositions are filed against application for restoration of lapsed patent, then the Controller would inform the patent owner of the concerned patent and thereafter schedule hearing before taking final decision regarding restoration.  After publication of application for restoration, if no opposition against restoration is filed, the patent is allowed to be restored and the renewal fees need to be paid along with additional fees, if any. The renewal fee is required to be paid within 01 month counting from the date of passing allowance of the decision by the Controller regarding restoration. Such decision would also be published in the official gazette of IPO.

In another situation, Controller may not allow the restoration of patent, the patentee thereafter request hearing to the Controller.

Requirements for Applying Restoration of Lapsed Patents

  1. Form – 15 is required to be filled with prescribed fees (u/s 60, Rule 84).
  2. Evidences / Proofs are required to be submitted to prove the fact that the non-payment of renewal/maintenance fee was unintentional.

Requirements for Opposition for Application of Restoration of Lapsed Patents

  1. Form 14: Any person interested may file opposition for restoration of lapsed patent by submitting this form along with the prescribed fee.

Rights of Lapsed Patents which Gets Restored

Once the lapsed patent is restored, the patentee rights of the patent owner will be subject to provisions as may be prescribed by the Controller in his/her decision. Also, the Controller may provide other provisions as he/she finds fit to imply for the protection of compensation of persons who may have started to avail them of between the dates or the time duration starting from the time when the patent ceased to have effect and the date of publication of the application for the restoration of patent (Section 62(1)).

Once patent gets lapsed, the patent owner loses his patent right as per the Indian Patent Act and the claimed patented invention becomes public property and anyone may also commercialize it. It should be also noted that, no suit or proceedings may be commenced or prosecuted with respect to patent infringement between the time duration i.e. date of patent cessation and publication date of application for restoration of patent.

 

Section 62 (1)  Where a patent is restored, the rights of the patentee shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the patented invention between the date when the patent ceased to have effect and the date of publication of the application for restoration of the patent under this Chapter.

 (2)  No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of the publication of the application for restoration of the patent.

Conclusion

Once a patent gets granted, the patentee need to be diligent about the payment of renewal fee pending every year. In cases where renewal fee has not paid with in prescribed period, the patent may get lapsed & one need to apply for restoration of lapsed patent under specific conditions. The Controller takes decisions regarding the restoration based on the documents submitted by the patentee.  The Controller examines the application of restoration and if he/she gets convinced that reason for delay was unintentional and there was no undue delay in making application for restoration, the lapsed patent may be restored subject to opposition proceedings, if any. Restoration of a lapsed patent comprises many prejudiced decisions that are required to be taken by the Controller of patents. Therefore, the patentees are advised for being vigilant regarding patent renewal deadlines.

ABOUT THE AUTHOR:

Dr. Amit Goel, Director and Jyoti Chauhan, Manager at Effectual Services.

Views expressed in this article are solely of the author and do not reflect the views of either of any of the employees or employers. For any query related to Restoration of lapsed patents in India, please feel free to contact at amit.goel@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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