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.

• 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

• 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.