To keep patent in force after it has been granted, the renewal fee has to be paid periodically (annually). Failure to pay the renewal fee may lead to lapse of a patent which means that patent ceases to have effect.
Under section 60 to 61 of the Indian Patents Act 1970, the lapsed patent can be restored; if it is proved by the patentee that the failure to pay fees was unintentional and pending renewal fees is paid within 18 months from the date on which the patent ceased to have effect. The evidence must support the patentee’s claim that the failure to pay fee was unintentional and there has been no undue delay in applying for restoration. The Controller may call for further evidence, which may include letters, deeds etc.
Illustration
The due date for payment of renewal fee is 24th June 2009 and the applicant fails to pay the renewal fee, as a result the patent lapses and ceases to be in force. If the applicant wants to restore the application, he shall make request to restore the application before 24th December 2010 i.e., within 18 months from the date patent ceases to be in force.
After hearing the applicant, if the Controller is prima facie[1] 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. Any person interested[2] may give notice to the Controller of opposition on the grounds:
- That the failure to pay the renewal fee by the applicant was not unintentional; or
2. That there has been undue delay in the making of the application.
If notice of opposition is given by the opponent to the Controller, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favor of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee [as may be prescribed] restore the patent and any patent of addition, which has ceased to have effect on the cesser of that patent.
The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, has to be entered in the register but which has not been so entered.
As, failure to pay renewal fee may lead to lapse of the patent, the time between lapse of patent and date of restoration of patent by the applicant is very crucial and during this time, there is no protection available to the patent in legal sense. During this time, someone may commercialize or use the patented invention assuming that patent has ceased to be in force. In such a case, if anyone has started commercializing the invention and then applicant restores the application and patent comes into force again, situation is extremely sensitive. This situation gives rise to following issues:
- 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 should include the provision and the Controller may impose other conditions for protection and compensation of the persons who have begun to use the applicant’s invention.
- 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.
Watch Video HERE (Lapsed Patent- Term 9)
Subscribe to YouTube Channel HERE
Join India’s largest Linkedin Group: Indian Patent Agent Exam
[1]Latin expression meaning on its first appearance, or at first sight.
[2] For details refer Section-2, Chapter-1
