Restoration of Lapsed Patent

Section 60 provides that where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within the period as may be allowed under section 142(4), 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 make an application for the restoration of the patent. Therefore, the Patents Act provides certain safeguards for restoring a lapsed patent.

Therefore, to keep the patent in force for its prescribed term, an annual renewal fee is paid to the patent office. If the same is not paid in the stipulated time, it lapses and becomes a public property. The applicant in order to restore back the patent has to submit the application for restoration within eighteen months from the date on which the patent ceased to have effect.

DISPOSAL OF APPLICATIONS FOR RESTORATION OF LAPSED PATENTS

Section 61 provides that if, after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the Controller is prima facie 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 in the prescribed manner; and within the prescribed period, any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds that-

• The failure to pay the renewal fee was not unintentional; or
• There has been undue delay in the making of the application.

If notice of opposition is given within the prescribed period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before deciding the case. If no notice of opposition is given within the prescribed period aforesaid or if in the case of opposition, the decision of the Controller is in favour 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 specified in the application 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 must be entered in the register, but which has not been so entered.

It is also to be noted that no such grounds are prescribed for filing such notice of opposition for restoration of lapsed patent and only the interested person can file the notice of opposition.  The time period for filing the notice of opposition is two months from the date of publication and the same is filed on Form 14 with its prescribed fees. Indian Patent Act do not provide any extension beyond the period of two months for filing the opposition. However, under Rule 138 extension of more two months can be asked from the Controller as it’s his discretionary power.

RIGHTS OF PATENTEE WHICH HAS BEEN RESTORED

Section 62 provides that where a patent is restored, the rights of the patentee shall be subject to such conditions as may be prescribed and to such other conditions as the Controller thinks fit to impose for the protection or compensation of persons who 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 the publication of the application for restoration of the patent. 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.

CONCLUSION

The Controller if satisfies with the evidences of reasonable failure to pay the renewal fee and of undue delay in the making of the application, the application along with the patent will be published in the official gazette as per Rule 84(3).  Thus, restoration of a lapsed patent involves several prejudiced decisions that may have to be taken by the Controller of patents. Therefore, patentees are recommended to be very vigilant about patent renewal deadlines.