A Complete Guide on the Restoration of a Patent

A Patent is valid for twenty years from the date of Patent filing. As per Section 53 of the Indian Patent Act, the owner of a Patent has to pay the renewal fee until the possession date given by the Patent Office. If the fee for Patent Renewal not paid by the Patent owner within the given time, then the Patent will be expired.

The renewal fee for Patent Registration is specified in the 1st time is payable before the 2nd year of expiry from the date of Patent in respect of 3rd year. Afterwards, the renewal fee for Patent Registration must be paid prior to the beginning of every succeeding year. But, this time is extendable by six months by requesting for the time extension. During the pendency of Patent Application or where the Patent has been granted after the expiration of 2 years from the date of filing the application, the renewal fee for Patent has to be paid within three months of the date of recorded in Patent Register or within the extended time, not after the nine months form the recording date. Scroll down to check more information regarding the Restoration of a Patent.

Let’s Understand the Restoration of a Patent

The Patents Act offers some protections for restoring an expired Patent. As per a Patent that is ceased to have an effect because of failure to pay the fees within the given time under Section 53 of the Act or within such period, permitted under Section 142 of the Act.

The patentee of his or her lawful representative may make an application in the proper manner for the restoration of a Patent. In a situation where the Patent was held by two or more individuals jointly then with the consent of the Controller, one or more of them without joining others on which the Patent is ended to have an effect. Any individual can pay the renewal fees of Patent Registration, the application for the restoration of a Patent which gets expired, the restoration application can be filed by the owner of a registered Patent or their legal representative.

If the owner of a Patent fails to pay the renewal fee within the time limit and also within the expansion time of six months by requesting a time extension, the Patent ceases to have an effect or expired from the expiration date. The Patent gets expired because of non-payment of renewal fee can be restored within eighteen months from the date of expiry.

Before one year of an application for restoration of a Patent that expired should be filed. If an outstanding annuity is not paid with the extension time, the one year of time looking for restoration starts from the recorded date.

Also, Read: What are the Types of Patent Applications? – An Overview

What are the Vital Requirements for Restoration of a Patent?

Following are some essential requirements for Patent Restoration:

• According to Section 60 of the Patents Act, 1970, an application for restoration of a Patent must be made by the owner of a Patent or their legal representative;
• Prescribed fee on Form 15;
• Any proof or evidence in favour of that the failure of the renewal was unintentional.

Even though there is no extra fee for Patent addition, the owner of a Patent has to submit each form separately for each extra Patent with that of the Patent application for restoration.

Procedure for Removal of Application for Restoration of a Patent

• When the Controller is clear-cut satisfied that the failure to pay the renewal fee was unintentional and there had been no more undue delay, then the application for restoration of a Patent will be published in the journal.
• In case the Controller is gratified that a clear case for Patent restoration has not been made, the Controller may issue a notification to the applicant to that outcome. Within one month from the date of notification, if the applicant makes a request to be heard on the problem, a hearing shall be given, and the application for restoration may be disposed. If there is no request for a hearing is received within one month from the notification date by the Controller, the restoration application is rejected. In case of cancellation of the restoration application, a speaking order shall be issued.
• Any individual involved may give the Notice of Opposition, in the suggested manner, to the applicant within two months of the publication date in the official journal on the levels that the failure to pay the renewal fee of Patent was not unintentional or that there has been undue delay in the making of the application.
• The Notice of Opposition may comprise a statement setting out the nature of the interest of the opponent, the grounds of opposition, and the facts relied upon. The Notice of Opposition will be sent to the applicant efficiently by the Controller.
• The procedure mentions in rules 57 to 63 for post-grant opposition for filing of a written statement, reply statement; hearing, reply proof, and cost will apply in this case.
• When there is no opposition is received within two months of time from the publication date of the restoration application or opposition, if any is prepared in favour of the Patent Owner, the Controller will issue an order permitting the application for restoration of a Patent. The non-payment of the renewal fee and the extra fee, as stated in the 1^st schedule, will be paid within one month from the date of the Controller order. The detail that a Patent has been restored shall be published in the journal.
• To safeguard the individuals who have to commence to use the invention of the inventor between the date when the Patent gets ceased to have an effect and the publication date of the restoration application, every order for restoration comprises the provisions and other situations, as the Controller may execute, for security and compensation of the above-mentioned individuals. No other proceeding shall be commenced or prosecuted in respect of a violation of a Patent happened between the date on which the Patent get ceased and the publication date of the application for restoration of a Patent.

Conclusion

By submitting all the documents, the restoration of an expired Patent is not given the option of filing the application. The Controllers inspects the information provided by the owner of a Patent for the restoration of a Patent. Restoration of an expired Patent contains many discriminatory decisions that may have to be taken by the Controller. Hence, Patent owners are suggested to be very vigilant about the Patent renewal time limit.

Also, Read: A Comprehensive Analysis of Chemical Patent