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Restoration of Patent – How to Guide?

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Last Updated on May 18, 2024 by G.Durghasree B.A.B.L (Hons)

A patent is granted for a twenty-year term starting on the date the patent was filed. The patentee must pay the renewal fee through the date of possession as indicated by the patent office, as per section 53 of the Indian Patent Act. If the patent holder does not pay the renewal or maintenance fees within the allotted time period by the Patent and Trademark Office, the patent will expire.

For the third year, the renewal fee, as stated in the first schedule, must be paid before the second year’s expiration date from the patent date. The renewal fee must then be paid before the beginning of every year that follows. However, through submitting a plea for an extension of time, this period may be extended by an extra six months. The renewal fee must be paid within three months of the date of recording in the patent registration or within the extended period but not later than nine months from the recording date if the patent application is still pending or if the patent has been granted after the expiration of two years from the date of filling.

Process of Restoration: The Lapsed Patent

The lapsed patent can be restored as per the following process:

  1. In accordance with Section 60 and Rule 84, the patent holder or his legal representative shall apply for the restoration of the lapsed patent.
  2. The application must be submitted in less than eighteen months of the lapse date. However, under Patent Rules Rule 138, the Controller may ask for a one-month extension at their discretion.
  3. Send in the necessary document along with the necessary sum of money, which is INR 2400/12000 for natural persons, startups, and other non-small entities, respectively.
  4. Provide compelling evidence that the failure to pay the renewal or maintenance fee was an accidental omission.
  5. A statement outlining the circumstances that resulted in the failure to pay the renewal fee must be included with the application. Copies of all relevant documents and supporting documentation may be used to support this assertion.
  6. The patentee’s argument that there hasn’t been an unjustified delay in applying for restoration and that the nonpayment of the renewal fee was an inadvertent error must be supported by the relevant evidence.
  7. The Controller has the right to ask for more supporting records, like deeds, letters, etc.
  8. Even though he would have preferred to pay if he had known the actual situation, the patentee cannot argue that his deliberate decision to withhold payment was unintentional if he did so on the false assumption that he gained no benefit.
  9. Usually, the patentee is the one who must pay the fee; however, in certain situations, the Controller may accept actions taken by a licensee or agent in place of the patentee in complex business arrangements.
  10. The applicant is informed if the Controller does not believe that a prima facie case for restoration has been made out, and the application may be denied if the applicant does not submit a written notice within a month stating that he would like to be heard.

The Prospect of the Expired Patent Being Restored

The Controller reviews the data submitted by the patent holder in order to restore the patent. The Controller verifies that the case of nonpayment was sincere and accidental. Following the aforementioned review, if the Controller is convinced, the application and patent will be published in the official gazette in accordance with Rule 84(3).

However, if the Controller is unconvinced by the presented evidence, he may decline to reinstate the lapsed patent. An applicant may ask the Controller for a hearing in such a situation. A request of this kind must be submitted in a month after the Controller’s ruling. If no such request is made, the Controller has the authority to reject the restoration inquiry. However, in accordance with Rule 84(3), the application and patent will be published in the official gazette if the Controller is convinced after the hearing.

It’s also very important to note that anyone can object to the restoration application by submitting the necessary documentation and fees with the prescribed form. However, you only have two months from the date the restoration application was published to complete this. In order to make a decision on the situation, the Controller will notify the patent holder and hold a hearing.

Furthermore, the controller rules in favour of the applicant to restore the patent on the occasion that no notice of opposition is filed. The decision is then published in the official gazette following payment of the unpaid fees as well as any extra costs within one month of the Controller’s order approving the restoration application.

Opposition in Restoration under Section 61

It is noted that, in accordance with Rule 84(3), any interested party may submit a notice of opposition in Form 14 whenever during the two months following the date of publication for the applicant. The Controller will deliver a copy of the notification concerning the opposition to the applicant.

The hearing for the opposition under Section 60 as it relates to the opposition process is required., to the required extent, comply to the prescribed procedure pertaining to Rules 57–63 regarding the filing of written statements, the filing of reply statements, the leaving of evidence, the hearing, and the costs.

Remittance of Unpaid Renewal Fees

After the Controller renders a decision in the applicant’s favour, the applicant has one month from the date of the Controller’s Order approving the restoration application to pay the unpaid renewal and extra costs in accordance with the First Schedule’s guidelines.

Late Payment:

It is still possible to make a renewal payment to prevent the patent from lapsing after the due date. There is a provision of a 6-month window. An extra cost is charged. It is mentioned below:

Natural Person- 480

Small Entity- 1200

Large Entity-2400

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FAQs

  1. When can a patent be restored after its cessation?

In less than eighteen months of the patent’s termination date, a request for restoration of the patent, together with the required payment, may be submitted. Following receipt of the request, the issue is noted in the official journal so that it can be processed further.

  1. What is the cost of restoration of a patent in India?

The official fees for the restoration of the patent in India are as follows:

  • For natural person/startup – Rs. 2400
  • For a small entity – Rs. 6000
  • For anyone other than a small entity – Rs. 12000.

G.Durghasree B.A.B.L (Hons)

G Durghasree B.A.B.L (Hons) is a registered trademark attorney with extensive experience as an Advocate for a period of 8 years. She possesses expertise in trademark law, including trademark filing and trademark hearings. Additionally, she is skilled in contract drafting and reviewing, providing legal advice and opinions, particularly in the areas of Company Law, Insolvency and Bankruptcy Code (IBC), and Goods and Service Tax Law (GST). Her experience encompasses both litigation and non-litigation aspects of these laws.