Options to restore lapsed patents in India

Introduction to patent maintenance

The term of a patent is for twenty years from the date of filing of the patent. The patentee has to pay renewal fee according to Sec 53 of the Indian Patent Act. Renewal fee or Maintenance fee is paid every year for keeping a patent in force for the term of patent. Renewal fee specified in the first schedule is payable before the expiration of the second year from the date of patent in respect of third year. Thereafter, renewal fee should be paid before the commencement of every succeeding year. However, this period is extendable by six months by requesting extension of time.

During pendency of the application of patent or where the patent has been granted after the expiry of two years from the date of filling, the renewal fee has to be paid within three months of the date of recordal in register of patents or within the extended period not later than nine months from the date of recording.
Renewal fee is not applicable for the patent of addition and for the period during which a direction was issued by the controller to keep the patent secret in view of certain secrecy directions. If the direction is revoked in any year irrespective of time at which the order was issued, renewal fee has to be paid for the full year.
 
Patent not renewed on time
If the patentee fails to pay the renewal fee within the prescribed period and also within the extendable period of six months by requesting extension of time, the patent ceases to have effect or lapses from the date of expiration. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse. 

Actions to be carried out to restore a lapsed Patent
Lapsed patent can be restored as per the below procedure

  • Application for restoration of lapsed patent should be made by the patentee or his legal representative according to Sec 60 and Rule 84
  • Application is to be filed within the eighteen months from the date of lapse
  • However one month extension can be sought under  rule 138 of Patent Rules, which is a discretionary power of the controller
  • Submit Form – 15 with prescribed fees (Section 60 and rule 84), which is INR 2400/6000/12000 for natural persons/small entity/other than small entity respectively.
  • Submit substantial evidence to support that the non payment of renewal/maintenance fee was unintentional
Statement and evidence generally considered for non payment of renewal/maintenance fee was unintentional

  • The Application must include statement setting out the circumstances which led to the failure to pay the renewal fee. This statement may be supported by evidence and copies of any document referred to.
  • The evidence must support the patentee's claim that the failure to pay the renewal fee was unintentional and that there has been no undue delay in applying for restoration.
  • The controller may call for further evidence, which may include letters, deeds etc.
  • If the patentee deliberately elects not to pay a fee under an erroneous supposition that he secured no advantage by doing so, he cannot claim that the failure to pay was unintentional even though he would have wished to pay if he had known the true position.
  • The patentee who has to pay the fee is usually the patentee himself, but may be a licensee or agent, under which circumstances the Controller recognizes the acts of a person apparently for the patentee where a business arrangement is complex.
  • In deciding whether the failure to pay renewal fee was unintentional, consideration is only to the patentee's last decision before expiry of the extended time for paying renewal fee under Section 53(2). No attention is paid to previous changes of mind. Any post-cessation decision not to apply for restoration is fatal to the applicant.
  • The patentee's financial inconvenience is not admitted as a ground of unintentional failure, but destitution resulting in physical impossibility to pay is considered.
  • As a patentee must exercise reasonable diligence in maintaining his patent, it is not necessarily sufficient to allege innocence of undue delay, because he was ignorant of the lapsing through the fault of his 'agent'. An evidence of proved negligence in the office of the agent may however be sufficient to secure restoration.
  • If the Controller does not agree that a prima facie case for restoration has been made out, the applicant is so notified and unless the applicant states within one month that he desires to be heard, the application may be refused.
Possibility of restoration of the lapsed patent
Upon submission of all the documents, the restoration of the lapsed patent is not a given possibility on filling of the application. The controller examines the information provided by the patent holder for the restoration of patent. If the controller is convinced that the evidence supported that non payment was unintentional and there has been no undue delay in making the application, the application along with the patent will be published in the official gazette as per Rule 84(3).

If the controller refuses to restore the lapsed patent based on evidence produced, the same shall be communicated to the applicant. If the applicant desires, a request to the Controller can be made to give him an opportunity to be heard. Such request needs to be made within a period of one month from the date of the decision of the Controller.  If no such request is made within the one-month period, the Controller shall refuse the application for restoration. On the other hand, upon request made by the applicant, the controller will give an opportunity for the applicant to be heard. If the controller is satisfied after the hearing, the application along with the patent will be published in the official gazette as per Rule 84(3).
The restoration application can be opposed by any person interested by filling Form 14 along with the fee within two months from the date of publication of the application for restoration. Once the notice of opposition is filed, the controller will notify the patentee and would provide him with a copy of notice. The controller will also give the patentee and the opponent an opportunity to be heard before deciding the case.
Further, under section 61(3) and Rule 86(1), if there is no notice of opposition filed, the controller rules the decision in favour of the applicant to restore the patent. Thereafter, upon paying the unpaid fees and additional fees within one month from the date of order of the controller allowing the application for restoration, the said decision is published in the official gazette.
It shall be noted that, no suit or proceedings will be commenced or prosecuted in  respect of an infringement of a patent commenced between the date on which the patent ceased and the date of publication of the application for restoration of patent.
 
Conclusion
Restoration of a lapsed patent involves several subjective decisions that may have to be taken by the Controller. Hence, patentees are advised to be extremely cautious about patent renewal deadlines. 
 
You may be interested in reading our article "Significance of Statement of Working In The Indian Patent System".
 
Also, feel free to contact us or ask us  a question and have it answered within 24 hours. 

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