Patent Restoration Procedure in India
Patent is a Techno-Legal document, exclusive rights granted by Government/Nation for a limited period of time to the patentee. The exclusive rights are right to prevent others from making, using, selling, or distributing the patented invention without patent holder permission during the term/active of Patent.
Generally most of the countries are giving right to patentee for making, using, selling, or distributing the patented invention for 20 years duration from the date of file. But, full rights acquire from the date of grant. Patent holder can enjoy his full rights from date of grant to till term completion (i.e 20 years from the date of first filing date.).
Patent holder has to pay renewal/maintenance fee till the date of possession given by the government, otherwise patent will be inactive. If renewal/maintenance fee not paid by the patent holder within prescribed time given by the PTO, patent will be lapsed.
Patents lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse, through following procedure.
The primary requirements to restore a patent:
1. Application for restoration of lapsed patent should be made by patentee or his legal representative according to sec 60 of Indian Patent Act 1970.
2. Form – 15 with prescribed fee
a. Six thousand as application fee (for legal entity; refer PTO site for updated fee structure)
3. Evidence to support the failure of renewal/maintenance fee was unintentional.
There is no additional fee to restore a patent of addition, but patent holder/patentee has to submit each individual form for each addition of patent along with parent patent restoration application.
After submitting all the documents controller will examine the information provided by the patent holder for the restoration of patent. If controller satisfies the failure to pay renewal fee was unintentional and there had been no undue delay in making the application, the application will be published in the official gazette, otherwise controller will be rejected the application.
Any person interested can give notice of opposition to the controller by submitting prescribed application, Form 14 within two months from the date of publication with prescribed fee Six thousand (for legal entity; refer PTO site for updated fee structure).
The grounds for opposition (under Section 61(1)) are:
I. That the failure to pay the renewal fee was not unintentional; or / and
II. That there has been undue delay in the making of the application.
If there is no notice of opposition filed, the controller restores the patent upon payment of unpaid renewal fee and additional fee as prescribed.
If notice of opposition filed by any person interested, the Controller sends a copy of the notice and statement of opponent to the applicant. The controller gives an opportunity to both the persons to be heard before he decides the case. Further they are not satisfied with the results, patentee or opponent can file appeal in Appellate Board for any decision of the Controller made (under Section 60) within three months from the date of the decision.
If the decision favors the applicant, he should pay unpaid renewal fee and additional fee as prescribed within one month from the date of order for restoration of patent. The Controller will advertise this information in the official journal.
A patentee cannot sue or prosecute the persons who have begun to use the applicant’s invention between the date of patent lapsed and the date of publication of the application for restoration.
Once patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse, otherwise patent will be ceased. Once the patent is ceased by the PTO it can’t be restored under any circumstances.