Restoration of a Patent

Last Updated at: Oct 06, 2020
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India has complied with its obligations under the Agreement on Trade-Related Intellectual Property Rights (“TRIPS”) to align itself with global IPR jurisdictions. The Budget 2020 also referred to improved protection for Intellectual Property Rights (including trade secrets, patents and copyrights) through a dedicated policy.

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A patent is handed out for a period of 20 years from the date of filing a patent application. According to Section 53 of the Indian Patent Act, the patentee has to pay a fee until the date of possession as said by the patent office. In the event of renewal/maintenance fees unpaid by the patent holder within a stipulated time, the patent will lapse.

Renewal Fee

The renewal fee, as described in the first schedule, is payable before the end of the second year for the third year. Renewal fee, therefore, must be paid before the start of every year thereon. This can be extended by six months. During the pendency of the said patent or if the patent has been granted after the expiry date of two years from the filing date, the renewal fee thus has to be paid within three months and not later than nine months.

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Restoration of Lapsed Patents

The Act has safeguards for restoring a patent that has lapsed. As a consequence, a patent that has been ceased to have effect because of payment failure the agreed fees within the approved period under Section 53, or within such a period permitted under section 142.

The legal representative of the patentee may submit an application for the restoration. Say, for example, if there were two or more people jointly holding the patent, then one of them can apply for restoration of the lapsed patent, with the controller’s leave.

It is important to note that the renewal fee can be paid by anyone, but the application has to be filed by the patent holder or his/her legal representative. One can use Form 16 under section 60 for the same.

There are conditions to this as well.

Say the request of the patentee for a hearing at a particular time is accepted. The controller must then, after weighing all options and situations, can publish the application if he/she finds that the patentee’s lapse of fee payment was unintentional.

Now, what happens when there is an opposition to restoration? Within three months of the application having being filed, under Rule 84, anyone can file for an objection to the renewal of the patent. If this is the case, a copy of the notice is sent to the patentee. Post that, there are steps to be followed as per protocol, which include filing of a reply statement, leaving evidence, hearings, costs as prescribed in Section 60.

Now, say the controller rules in favour of the applicant, then the latter can proceed to pay the unpaid renewal fee within a date’s time of the controller ordering restoration of the patent.

A lawyer with 14 years' experience, Vikram has worked with several well-known corporate law firms before joining Vakilsearch.