India: Restoration Of Lapsed Patents: An Indian Perspective

INTRODUCTION

A patent is granted for term of twenty years from the date of filing of the patent. According to section 53 of Indian Patent act, patentee has to pay renewal fee till the date of possession given by the patent office. If renewal/maintenance fee not paid by the patent holder within prescribed time given by the PTO, patent will be lapsed.

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.

RESTORATION OF LAPSED PATENTS

The Patents Act provides certain safeguards for restoring a lapsed patent. Accordingly a patent that is ceased to have effect because of failure to pay the prescribed fees within the prescribed period under Section 53 of the Act or within such period, allowed under Section 142 of the Act.

The patentee of his legal representative, may, make an application in the prescribed manner for the restoration of the lapsed patent. In the case 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 others may submit the application for restoration within eighteen months from the date on which the patent is ceased to have effect. Though the renewal fees can be paid by any person, the application for the restoration of a lapsed patent, the application has to be made by the patentee or his legal representative.

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.

Within one year of an application for restoration of patent that lapsed should be made. If an overdue annuity is not paid within the extension period, the one year period for seeking restoration commences from the date of recordal.

SECTION 60 INDIAN PATENT ACT SAYS:

(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.

(2) x x x

(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.1

THE ESSENTIAL REQUIREMENTS TO RESTORE A PATENT:

1. Under Section 60 of the Patents Act 1970, an application for restoration of lapsed patent should be made by patentee or his legal representative.

2. Prescribed fee on Form 15

3. Proof to support that failure of the renewal/ maintenance was unintentional.

Although there is no additional fee for Patent of addition, but the patent holder or the patentee has to submit each form individually for each additional patent with that of the parent restoration application.

EFFECT OF NON PAYMENT OF RENEWAL FEES

To keep the patent in force for its prescribed term, an annual renewal fee is paid to the patent Office. If the same is not paid in the stipulated period then it lapses (ceased to have effect) and becomes a public property. The Act provides certain Safeguards for restoring a lapsed patent.

Accordingly, a patent which is to have effect by reason of Failure to pay the prescribed renewal fees within the prescribed period under Section 53 of the Act, the patentee or his legal representative may make an application in the prescribed manner, for the restoration of the lapsed patent. In case 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 others, may submit the application for restoration within eighteen months from the date on which the patent ceased to have effect( Section 60(1)).

PROCEDURE FOR DISPOSAL OF APPLICATION FOR RESTORATION2

a) When the Controller is prima facie satisfied that the failure to pay renewal fee was unintentional and there had been no undue delay, the application for restoration will be published in the official journal.

b) If the Controller is satisfied that a prima facie case for restoration has not been made, the Controller may issue a notice to the applicant to that effect. Within one month from the date of notice, if the applicant makes a request to be heard on the matter, a hearing shall be given and the restoration application may be disposed. If no request for hearing is received within one month from the date of notice by the Controller, the application for restoration is refused. In case of rejection of the application for restoration, a speaking order shall be issued.

c) Any person interested may give Notice of Opposition, in the prescribed manner, to the application within two months of the date of Publication in the official journal on the grounds that the failure to pay the renewal fee was not unintentional or that there has been undue delay in the making of the application.

d) The Notice of Opposition shall include a statement setting out the nature of the opponent's interest, the grounds of opposition, and the facts relied upon. The notice of opposition shall be sent to the applicant expeditiously by the Controller.

e) The procedure specified in rules 57 to 63 for post grant opposition for filing of written statement, reply statement; reply evidence, hearing and cost shall apply in this case.

f ) When no opposition is received within a period of two months from the date of publication of the application for restoration, or opposition, if any, is disposed of in favour of the Patentee, the Controller shall issue an order allowing the application for restoration. The unpaid renewal fee and the additional fee, as mentioned in the first schedule, shall be paid within one month from the date of order of the Controller.

g) The fact that a patent has been restored shall be published in the official journal.

h) To protect the persons who have begun to use the applicant's invention between the date when the Patent ceased to have effect and the date of Publication of the Application for restoration, every order for restoration includes the provisions and other conditions, as the Controller may impose, for protection and compensation of the above-mentioned persons. 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.

OPPOSITION TO THE RESTORATION OF A LAPSED PATENT

  • If after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application he shall publish the application in the prescribed manner and within the prescribed period any person interested may give notice for opposition for the restoration of the patent on either or both of the following grounds:-

a) That the failure to pay the renewal was not unintentional; or

b) That there has been undue delay in the making of the application for restoration (Section 61(1)).

  • No other Grounds are prescribed for filing such notice o opposition for the restoration of a lapsed patent. Only person interested can file the notice of opposition for the restoration of the lapsed patent.
  • The time period for filing the notice of opposition is two months from the date of publication and the same is filed on Form 14 with its prescribed fee. Indian Patent Act and the rules do not provide any extension beyond the period of two months for filing the opposition. However, a petition under Rule 138 of Patent Rules can be filled seeking extension of time beyond the two months period with its prescribed fees. It should be noted that the petition for extension to be filed within the period of two months only. Since the grant of the extension under rule 138 is the discretionary power of the Controller, the grant of extension cannot be taken for granted.

RIGHTS OF PATENTEE OF LAPSED PATENT WHICH HAVE BEEN RESTORED SECTION 62

  • On the restoration of a patent, the rights of the patentee shall be subject to such provision as may be prescribed by the Controller in his order and to such other provisions as he thinks fit to impose for the protection of compensation of persons who might have began to avail them of. Or the patented invention between the date when the patent ceased to have effect and the date of publication of the application for the restoration of patent Section 62(1),
  • On the lapsing of the patent due to non payment of the renewal fees, the patentee loses his right in the patent and the invention becomes public property. The provision contained in section 62 of The Act is to safeguard the interests of those persons who after ascertain from the Register of Patents that the patent has lapsed due to non payment of the renewal fees and become public property had started commercially using the invention.3

CONCLUSION

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).

Restoration of a lapsed patent involves several prejudiced decisions that may have to be taken by the Controller of patents. Therefore, patentees are recommended to be very vigilant about patent renewal deadlines.

Footnotes

1 Section 60, Indian Patents Act 1970

2 http://www.ipindia.nic.in/ipr/patent/manual/HTML

3 Part III-Chap.11-Restoration Of Lapsed Patents.

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