In the field of Intellectual Property Rights, the patent is an important part which helps the inventor to safeguard his invention which is Novel, Non-obvious and capable of industrial applications. Yet, despite knowing about what is a patent and the process to file the patent application, there are instances where the rights provided by the act lapse and inventor lose their rights over inventions. The restoration of lapsed patents helps as a solution to provide these rights back to the inventors.
The process of patent restoration holds significant value of lapsed patent in indiaue not only for the individual but also for the industries and the advancement of technology globally. The process of restoration of a lapsed patent requires a legal framework because the inventor needs to do some formalities to restore the patent.
In this article, we are going to discuss what is a lapsed patent and what is the thorough process for the restoration of lapsed patent in India.
Renewal of granted Patent
After following the process to file the patent application, the controller of patents will grant your patent and will make the entry in the register of patents under section 67 of the Patents Act of 1970.
As we know the patentee must pay the renewal fee two years from the date of filing within 3 months from the date of grant.
For example, suppose you filed the patent application on 1 January 2020 and your patent was granted on 19 March 2024. Now, you have 3 months to pay the renewal fee for the years starting from 2023 (as you must pay the renewal fee two years from the date of filing which is 1 January 2020).
This fee can be paid yearly, or you can file the full fee just one time, it depends on the inventor and how he wants to process it.
Extension of times from renewal
When the patentee (the person who got the patent for his invention) fails to pay the renewal fee within 3 months from the date of grant, the patent comes into the period of extension which means that the patentee must ask for an extension of time to pay the renewal fee by filing the FORM 4 for the extension of time. By filing FORM 4 with a prescribed fee which is 480 rupees per month for the natural person, the time can be extended for more than 6 months. It means the patentee has the total time to pay the renewal fee is now 3+6=9 months.
Within this period, the patentee can pay the fees so that his rights over his invention must remain in force.
What is a lapsed patent?
Suppose you fail to pay the renewal fees even after the expiration of the renewal period + extension period which is 9 months. In that case, your patent will be considered as a lapsed patent. It means that now you have no rights over your patent and any other person can use your invention without your consent. A lapsed patent can cause harm to your business and that is why it is recommended that you should pay the renewal fee so that your invention can be in force to gain the profit with the help of such invention.
Restoration of lapsed patent
Section 60 of the Patents Act of 1970 deals with the restoration of lapsed patents which is supported by Rule 84 of the Patent Rules of 2003. As per this section, if a patent has ceased to have an effect, then:
- The patentee,
- His legal representative,
- Joint patentees, or any one of them
Can apply for the restoration of lapsed patent in India. This application will contain the full statement setting out the circumstances which will support why there was a delay in paying the renewal fee.
Time period to restore the Lapsed patent
Once the patent is lapsed, it will come into the public domain and any person can use such invention. But if the patentee wants to restore his rights over his invention, then he can apply for the restoration of the lapsed patent within 18 months from the date from which his patent was lapsed. After the grant, you get 3 months + 6 months of the extension period to pay the renewal fees which means after the expiry of a total of 9 months from the date of the grant, your patent is considered as lapsed patent. You have to apply for the restoration of the lapsed patent within 18 months from this date.
Conditions related to the restoration of lapsed patent
As per the Patents Act, there are two conditions which will be checked by the controller of the patent while working on the process to restore the patent. These conditions are:
- The failure to pay the renewal fee was unintentional.
- There was no undue delay in the making of the application.
The controller of patents will check these two conditions and will restore your patent only on these two conditions. So your reason must be genuine.
Form and Fees to restore the lapsed patent
The Second Schedule of the Act provides Form 15 for the restoration of the lapsed patent in Inida which needs to be filed within 18 months from the date on which the patent was lapsed. The fee to file Form 15 is 2400 rupees for the natural person. You need to pay the additional fees which is 4800 Rupees for the natural person. You need to pay these fees once the controller accepts your application and is ready to restore your patent.
Process for the restoration of lapsed patent
The process for the restoration of the lapsed patent is not very complicated but it covers some important steps. So let us cover 6 Important Steps for Restoration of Lapsed Patent in detail.
Filing of online application
You need to file this Form 15 online by paying the prescribed fee which is 2400 rupees for the natural person.
You can file this form on the official website of the Indian Patent Office:
https://ipronline.ipindia.gov.in/epatentfiling/goForLogin/doLogin
Consideration of application
Once you have applied by submitting Form 15 with the prescribed fee, the controller will check your application and reason with pieces of evidence provided by you. If the controller thinks that the reason provided by you is not suitable then he shall inform you that your patent cannot be restored. In such a case, the patentee can ask for a hearing within one month.
Hearing
For the hearing, the controller will send you the mail and offline letter in which you will get the details and time of the hearing. You need to submit the notification as soon as possible that you are attending the hearing. It should be kept in mind that you cannot adjourn the hearing for more than two times.
After attending the hearing, the controller will tell you if your patent can be restored or not. In case of restoration and the controller needs some other documentation, then you have to submit those documents within 15 days from the date of the hearing.
Publication
Suppose the controller is satisfied and ready to restore the patent. In that case, he will publish the application in the official gazette so that others can get the notification about the restoration request made by the patentee.
Notice of opposition
After the publication of the application, any person interested in the patent can file the notice of opposition for the restoration of the lapsed patent by filing Form 14 with a fee of 2400 rupees for natural persons.
The notice of opposition can be done within 2 months from the date of such publication only.
After getting the notice of opposition, the controller will inform the patentee and then hear both parties.
After the hearing, if the controller is satisfied that the objection was not suitable, then he will quash that notice of opposition and dispose of the case.
Restoration of Lapsed patent
Once the objection is removed, the controller will ask you to pay the additional fee which is 4800 rupees + renewal fee which was due to pay. After taking the fees, the controller shall restore the patent and make the entry in the register of patents under section 67 of the Patents Act and shall publish his decision in the official gazette.
Rights of the owner related to lapsed Patent
The rights over the patents shall not be applicable at the time of the lapsed period. The patentee cannot file a suit for the infringement if any other person starts selling his product or process.
His rights will come into force after the publication of the decision of the controller about the successful restoration of the lapsed patent.
Conclusion
In conclusion, we can say that all these are necessary steps to restore the patent once it has lapsed. The patentee should pay the renewal fee on time if he wants to secure his invention. In the present time, when a person has filed an invention for a patent and got the patent, he should focus on commercialization.
After reading this article, I hope now you know about the restoration of lapsed patents. If you have any questions or suggestions, you can write in the comments.