How Do You Deal With a Lapsed Patent?

Introduction

A patent is granted to the inventor over his invention, allowing him/her to control the production, use, sale and purchase and import of the patented invention. A patent granted to the patentee prohibit others from reproducing, selling, purchasing, using and importing the patented invention, without the permission of the patent holder.

The rationale behind this prohibitive system is to encourage inventions. If such patent protection is not granted , then gains which should have been accrued to the inventor, will accrue to the entity which just copied his invention, without any effort. This can in turn discourages innovation, halting technological process. Patents help prevent this from happening.

Of course, if the patent was granted for an unlimited period of time, that too would stagnate progress. In order to counter this, patent terms generally expire 20 years after the date of filing. But in the meantime there are other measures in place to discourage patent owners to release unused patents into the public domain as early as possible. One of these is through the required payment of annual patent fees, failing which the patent will automatically lapse before the 20 year period.

What is the Difference Between a Lapsed Patent and an Expired Patent?

In both the expiry and lapse of the patent, the rights of the patentee are terminated. However, there is a difference between both. A patent is said to be expired when the entire validity period for which the patent was granted ends. In India, patents are generally granted for up to 20 years from the date of filing of patent application as per section 53(1) of the Patents Act, 1970.

In contrast, a patent is said to be lapsed because of non- payment of the renewal fee, within the prescribed time limit. This is because the law requires annual fees to be paid to maintain granted patent rights.

Effects of Lapse or Expiry of Patent

As per section 53(4) of the Patents Act, 1970, either on the lapse or on the expiry of the patent, the subject matter covered by the patent shall not be entitled to any protection. All the rights which were granted to the patentee stands ceased and such patented invention becomes open to the public.

Renewal of Patents

The provisions dealing with renewal of a patent is contained in Rule 80 Section 53 of the Patents Act, 1970.

The renewal fees specified in the first schedule are payable before the expiration of the second year from the patent date in respect of third year, calculated from the date of filing. If the patent application itself was granted after two years from the date of filing, the renewal fee has to be paid within a period of three months of the date of recording in patents registration or within the extended period but not later than a period of nine months from the recording date.

This fee must be remitted to the Patents office before the year for which the payment has not yet been made begins.

If a patent has ceased to have effect as a result of failure to pay the renewal fee within the prescribed time (i.e. before the expiration of the previous year), then the patent owner can request an extension of time to pay the renewal fee. The extended period is not more than 6 months from the date on which the patent ceased to have effect.

Restoration of Lapsed Patents

‘Restoration’ is the process by which a lapsed patent (which has already exceeded the 6-month extension period mentioned above) can be put back into force.

As per section 60 of the Patents Act, 1970, to restore a lapsed patent, the patentee or his legal representative can file an application in form 15 within 18 months from the date of lapse of the patent.

It must be noted that the applicant must provide valid and convincing proof and reasons that the non-payment of the renewable fee was unintentional or unavoidable, as the restoration is at the discretion of the controller.

What Happens When Patent Is Restored?

As per section 62 of the Patents Act, 1970,

The controller may impose conditions on the rights restored to the patentee.

The law protects the persons, who might have utilized the patented invention, during the period between the date of lapse of the patent and the date of publication of application for restoration of the patent.

The provision contained in section 62 of The Act is to safeguard the interests of those persons who after ascertaining from the Register of Patents that the patent has lapsed due to non-payment of the renewal fees and has become public property start commercially using the invention.

Conclusion

Restoration is a boon for the patent holders, who for some reason or another, were unable to make the annuity payments for their patent. However, it is not a cure all because there is no automatic restoration of the patent.

The controller examines the information provided by the patent holder for the restoration of patent. If the controller is convinced that the nonpayment was unintentional and there has been no undue delay in making the application, the application along with the patent will be published in the official gazette as per Rule 84 (3) of the Patent Rules. Since the restoration of lapsed patents is at the discretion of the Controller of Patents, patent holders are advised to always be cautious of their renewal deadlines.

Author: Shubham Panwar, Legal Intern at PA Legal.

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