ANALYSIS OF RESTORATION OF LAPSED PATENT

A lapsed patent is a patent that has become ineffective because the fee stipulated by the Patent Law has not been paid. It should be noted that patent owners can request the restoration of expired patents. Such a request for recovery must be made within 18 months from the date the patent expires. Patent law provides certain guarantees against the restoration of expired patents. Therefore, the patent will cease to be valid if the prescribed fee is not paid within the prescribed period under Article 53 of the Act or within the period permitted under Article 142 of the Act. In a defined manner, the patentee of the statutory agent can seek the restoration of a patent that has expired. If a patent is owned jointly by two or more people, one or more of them, with the permission of the responsible person, will be able to recover within 18 months of the patent becoming invalid, regardless of any other relationships. You have the option to make a request. The renewal fee can be paid by anyone, however, the patent owner or his statutory agent must request the restoration of a lapsed patent.

PROCESS TO RESTORE THE LAPSED PATENT

According to Sec 60 and Rule 84, the patentee or his legal agent must file an application for the reinstatement of a lapsed patent.

The application must be filed within eighteen months of the lapse date. However, the controller might request a one-month delay under rule 138 of the Patent Rules, which is a discretionary power.

For individuals, small businesses, and non-small businesses, please submit the required forms and fees, which are INR 2400/6000/12000 respectively.

Submit compelling evidence that the failure to pay the renewal/maintenance charge was inadvertent.

The application must include a statement describing the circumstances that led to the renewal fee not being paid. Evidence and copies of any documents referenced may be used to back up this claim.

Evidence must support the patentee’s claim that the renewal fee was not inadvertently paid and that the request for recovery was not unreasonably delayed.

The controller can also additionally name for similar evidence, which can also additionally encompass letters, deeds, etc.

If the patentee deliberately decides not to pay the fee based on the false assumption that he did not make a profit, the payment is unintentional, even if he wanted to pay if he knew the facts.

The patent owner who has to pay the fee is usually the patent owner himself, but can also be a licensee or agent. This allows the responsible person to recognize the behavior of someone who appears to be acting on their behalf in a complex business relationship.

If the Controller does not agree that the proceedings have been filed for recovery, the applicant will be notified and if the applicant does not declare that he or she wishes to be heard within a month, the application will be rejected.

EFFECT OF NON PAYMENT OF RENEWAL FEE

The Patentee must pay an annual renewal fee to the Patent Office in order to keep the Patent valid for the specified period. If the Patentee fails to pay the renewal fees within the prescribed time period, the Patent will lapse or cease to have an effect, and the property of the public will become the property of the Patentee. In India, the Patent Act of 1970 contains measures for the restoration of a lapsed patent. As a result, if a Patent ceases to have an effect due to failure to pay the specified renewal fees within the prescribed time period, the Patentee or his legal agent can apply for the Restoration of Lapsed Patent in authorized manner under Section 53 of the Patent Act, 1970. If a patent is held jointly by two or more people, one or more of the joint owners can submit a Restoration application without the involvement of the others, with the authorization of the Controller of Patents. The application for Restoration must be filed within 18 months after the date the Patent lapsed or ceased to have an effect, according to Section 60(1) of the Patent Act, 1970.

PROCEDURE FOR DISPOSAL OF APPLICATION FOR RESTORATION

The application for restoration will be published in the official journal once the Controller is satisfied that the failure to pay the renewal price was inadvertent and that there was no excessive delay.

If the responsible person is confident that the restoration is not reliable, the responsible person can notify the applicant accordingly. If the applicant applies for a hearing within one month from the date of notification, the hearing can be conducted and the request for restoration can be completed. If there is no request for a hearing within one month from the date of notification from the administrator, the request for recovery will be rejected. If the refund request is rejected, a speaking order will be issued.

Any person having an interest in the application may file a Notice of Opposition in the required manner 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 inadvertent or that the application was made with undue delay

The nature of the opponent’s interest, the grounds of opposition, and the facts relied on must all be included in the Notice of Opposition. The Controller must send the notice of opposition to the application as soon as possible.

The procedure for filing a written statement, reply statement, reply evidence, hearing, and fee outlined in Rules 57 to 63 for post-grant opposition should apply in this instance.

The Controller shall issue an order granting the application for restoration if no opposition is received within two months of the date of publication of the application for restoration, or if any opposition is disposed of favor of the Patentee. The outstanding renewal cost and additional fee, as specified in the first schedule, must be paid within one month after the Controller’s order. The official journal must report the fact that a patent has been restored.

Every order for restoration includes provisions and other conditions, as the Controller may impose, for the protection and compensation of persons who have begun to use the applicant’s invention between the date when the Patent ceased to have an effect and the date of Publication of the Application for restoration. Between the date on which the Patent ceased to have an effect and the date of the Publication of the Application for Restoration of the Patent, no suit or other process may be instituted or pursued in respect of a patent infringement.

RIGHTS OF PATENTEES OF LAPSED PATENTS WHICH HAVE BEEN RESTORED

SECTION 62 – THE PATENTS ACT, 1970

When a patent is restored, the patentee’s rights are subject to any provisions that may be prescribed, as well as any other provisions that the Controller deems appropriate for the protection or compensation of persons who may have begun to use, or have taken definite steps by contract or otherwise to use, the patented invention between the date when the patent ceased to have an effect and the date when the application for restoration is published.

No suit or other process may be brought or prosecuted in connection with a patent infringement committed between the date the patent ceased to have an effect and the date the application for restoration of the patent is published.

CONCLUSION

The Controller must make a number of subjective decisions in order to restore an expired patent. As a result, patentees should be particularly cautious when it comes to patent renewal dates. The restoration of an expired patent is not a certain possibility on filling out the application, even if all of the required documents are submitted. For the purpose of restoring the patent, the controller reviews the information submitted by the patent holder. Late payment of fee or delay results in further consequences which defined under patent act, 1970.

 

REFERENCE

Corpbiz.ioRestoration of Lapsed Patent in India: A Complete Overview, https://www.google.com/amp/s/corpbiz.io/learning/restoration-of-lapsed-patent-in-india/

Intepat, https://www.intepat.com/blog/patent/restoration-lapsed-patents-renewal-india/

Vikram Shah, Vakeel search, https://www.google.com/amp/s/vakilsearch.com/advice/patent-restoration/amp/

Priyanka Rastogi,mondaq, Restoration Of Lapsed Patents: An Indian Perspective06 May 2014, https://www.mondaq.com/india/patent/311398/restoration-of-lapsed-patents-an-indian-perspective