If you own a patent in the UK (either a GB patent or a UK designation of a European patent), you need to pay renewal fees every year to keep it in force.
If you inadvertently fail to pay the fee on time, your patent will cease if the fee is also not paid with a surcharge within a grace period. This means that you lose your exclusive rights to prevent someone else from working the invention in the UK. Once the patent ceases, anyone is free to use the invention without requiring your permission.
But don't panic! There is a way to restore your lapsed patent and regain your rights, as long as you act quickly and follow the correct procedure.
In this blog, we will explain how to apply for restoration of a lapsed patent in the UK, the requirements and conditions that need to be met, and what the consequences of restoration are for both you as the patent owner and for potential infringers who have decided to use your invention.
THE PROCEDURE FOR APPLYING FOR RESTORATION OF A LAPSED PATENT
The procedure in the UK is governed by Section 28 of the Patents Act 1977 and Rule 40 of the Patents Rules 2007. You can find more details in the Manual of Patent Practice and the guidance from the Intellectual Property Office (IPO)1.
The patent will cease if the renewal fee is not paid within 6-months of the renewal fee due date. This six-month period is known as the grace period and allows for the renewal fee to be paid late (with an additional late fee that increases for each month of delay).
For example, if the renewal fee was due on 31 May 2022, the 6-month grace period for paying the renewal fee expired on 30 November 2022. If the renewal fee was paid by this date, the patent is treated as though it never lapsed and any infringing act carried out is actionable.
After 30 November 2023 the patent would cease as of the original renewal date (i.e. 31 May 2022). In his case, the patent would no longer be enforceable against any potentially infringing acts that occurred after the renewal date.
Once the patent has ceased, a further period of 13 months from the end of the grace period (i.e. 19 months from the date on which the renewal fee was due) is available to restore the patent. For example, if the renewal fee was due on 31 May 2022, the grace period would expire on 30 November 2022. You would then have until 31 December 2023 to apply for restoration.
To apply for restoration, you need to fill in Form 16 and send it to the UK IPO along with an official fee of £135. You also need to provide evidence to support your application, such as a statement explaining why you failed to pay the renewal fee on time.
REQUIREMENTS AND CONDITIONS FOR RESTORATION
The main requirement for restoration is that you have to satisfy the UK IPO that your failure to renew your patent (pay the renewal fee on time) was unintentional. This means, for example, that your restoration cannot be used to recover a patent when you deliberately let your patent lapse, but rather that it was due to an oversight, mistake, accident or other inadvertent cause.
The UK IPO will examine your application for restoration and the evidence provided and decide whether to grant or refuse restoration. If they grant restoration, they will offer you the opportunity to restore your patent, but you will have to pay the outstanding renewal fees and accept any third-party terms that the Office considers it reasonable to impose. If the Office initially considers that you application for restoration should be refused, you may request a hearing with a senior official.
CONSEQUENCES OF RESTORATION
Restoration of a lapsed patent means that your patent will be treated as if it had never ceased to have effect. This means that you can enforce your rights against any infringers and stop them from using your invention without your consent.
However, there are some exceptions and limitations to this rule. For example, if a third party started using your invention or made serious preparations to do so while your patent was lapsed (i.e. during the 13-month period after expiry of the grace period), they may be able to continue doing so without infringing your patent. This is known as an "intervening right". This intervening right is intended to protect innocent users who rely on the public status of the invention.
Therefore, it is important to apply for restoration as soon as possible after you realise that your patent has lapsed, in order to minimise the risk of losing your rights or remedies.
CONCLUSION
In summary, if you have a patent in the UK that has lapsed due to non-payment of renewal fees, you can apply for restoration within 19 months of its lapse date, provided that you can show that your failure to renew was unintentional. Restoration will restore your exclusive rights to your invention, subject to some exceptions and limitations. To apply for restoration, you need to fill in Form 16, pay an official fee of £135 and provide evidence to support your application.
Footnote
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.