A patent is a statutory right granted for a limited period of time to the patentee by the government in return of disclosing an invention, to excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent. In India, the term of a granted patent is 20 years from the date of filing of the patent application. While a patent is granted to the patentee in order to encourage technological advancements for public benefit, it is the responsibility of the patentee to ensure the timely payment and monitoring of the renewal fees.
LAPSING OF A PATENT DUE TO NON-PAYMENT OF RENEWAL FEES
Once the patent is granted, the patentee needs to ensure about the payment of renewal fee pending every year. In situations where renewal fee has not been paid within a prescribed period, the patent may be lapsed in accordance with the provisions of Section 53 (2). It states that a patent shall cease to have effect on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
The renewal fee applicable as per the Act should be paid before the expiration of the 2nd year from the date of patent in respect of the 3rd year. Thereafter, renewal fee should be paid before the expiration of every succeeding year. However, this period may be further extended by 06 months by an application for extension of time. In cases where the patent is granted after completion of 2 years from the date of filing the patent application, the maintenance fee needs to be paid within 3 months from the date of recordal of grant in the register of patents. Also, it may be further extended for a duration of not more than 09 months from the date of recordal of grant of patent in the patent register.
The patent and the subject matter covered in the patent will be a part of the public domain and not protected, if the patent is lapsed due to non-payment of the renewal fees. Moreover, Section 53 (2) of the Act provides that the subject matter of the patent may be used by any person without infringement.
RESTORATION OF LAPSED PATENTS
In case the patent has lapsed due to non-payment of the renewal fees, the patentee can file an application to restore the lapsed patent within 18 months from the date of lapse/cessation along with the prescribed fee. Moreover, a one-month extension may also be availed under Rule 138 of Patent Rules, 2003 which is a discretionary power of the Controller. Section 60 (1) states that where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within that period as extended under sub-section (3) of section 53, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
PROCEDURE FOR RESTORATION OF LAPSED PATENTS
- Application for restoration of lapsed patent by the patentee or his legal representative in Form 15 and payment of prescribed fees. A proof to support that the failure of the renewal of Patent was unintentional from Patentee’s side should be submitted by the Patentee alongwith a statement to specify the circumstances which led to the delay in payment of the renewal fees.
- Supplying additional evidence according to the requirement of the controller. If the Controller does not agree that a prima facie case for restoration has been made out, the applicant is notified and unless the applicant states within one month that he desires to be heard, the application may be refused.
- If the Controller is of the view that a prima facie case for restoration of lapsed patent is made out, the application for restoration of lapsed patent is published in the journal.
- Any interested person can give notice of opposition in Form 14 for restoration of lapsed patent within two months from the publication date. A notice copy related to the opposition shall be delivered to the applicant by the controller. The specified procedure related to Rules 57-63 pertaining to written statement filing, reply statement filing, leaving evidence, hearing and costs shall to the required extent apply to the opposition’s hearing under the terms of Section 60 as applicable to the opposition proceeding’s hearing.
- In case the Controller’s decision resides in favour of the applicant, the applicant can pay the unpaid renewal and additional fees according to the specifications of the First Schedule, within a month’s time from the date of the Controller’s Order permitting the application for restoration.
- Restoration of the lapsed patent is published in the official journal.
PROTECTION TO INDIVIDUALS THAT AVAILED THE PATENT RIGHTS DURING THE LAPSED PERIOD
Section 62 provides that upon restoring the patent, rights of the patentee shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the patented invention between the date when the patent ceased to have effect and the date of publication of the application for restoration of the patent. Moreover, it is clarified that 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.