As per the provisions mentioned under the Indian Patents Act, 1970, a patent is granted for a period of 20 years from the date of filing of the ordinary application. For patent applications entering India, through PCT, the tenure of patent is calculated from the date of filing of the International Application. But the pre-requisite here is to pay renewal fee every year before the due date or within 6 months after the due date.
Renewal fee mentioned in the first schedule is payable before the expiration of the second year from the date of patent in respect of third year. Thereafter, renewal fee should be paid before the beginning of every succeeding year. However, this period is extendable by six months by requesting extension of time.
INDIAN PATENT RENEWAL FEE SCHEDULE
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According to Rule 80(2) of the Indian Patents Act, the patentee should correctly write the patent number, date of patent and the year for which the renewal fees is paid, in the renewal payment request.
It is particularly important to note that the advance payment of renewal is allowed as per Indian Patents Act.
What happens if the patentee fails to pay the renewal fee?
If the patentee missed to pay the renewal fee within the prescribed period and also within the extendable period of six months by requesting extension of time, the patent ceases to have effect or lapses from the date of expiration. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse.
It is still possible to make a renewal payment to prevent the lapse of the patent after the due date. There is a provision of 6 month window. An additional fee is charged. It is mentioned below:
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My Patent has lapsed. What can I do next?
Lapsed patent can be restored as per the following process:
1. Application for restoration of lapsed patent should be made by the patentee or his legal representative according to Sec 60 and Rule 84.
2. Application is to be filed within the eighteen months from the date of lapse. However one month extension can be sought under rule 138 of Patent Rules, which is a discretionary power of the controller
3. Submit the prescribed form with prescribed fees, which is INR2400/6000/12000 for natural persons/small entity/other than small entity respectively.
4. Submit substantial evidence to support that the nonpayment of renewal/maintenance fee was unintentional.
5. The Application must include statement setting out the circumstances which led to the failure to pay the renewal fee. This statement may be supported by evidence and copies of any document referred to.
6. The evidence must support the patentee’s claim that the failure to pay the renewal fee was unintentional and that there has been no undue delay in applying for restoration.
7. The controller may call for further evidence, which may include letters, deeds etc.
8. If the patentee deliberately elects not to pay a fee under an erroneous supposition that he secured no advantage by doing so, he cannot claim that the failure to pay was unintentional even though he would have wished to pay if he had known the true position.
9. The patentee who has to pay the fee is usually the patentee himself, but may be a licensee or agent, under which circumstances the Controller recognizes the acts of a person apparently for the patentee where a business arrangement is complex.
10. If the Controller does not agree that a prima facie case for restoration has been made out, the applicant is so notified and unless the applicant states within one month that he desires to be heard, the application may be refused.
Likelihood of restoration of the lapsed patent:
For the restoration of the patent, the information provided by the patent holder is examined by the Controller. The controller makes sure that the non-payment instance was genuine and un intentional. If the controller is convinced after the above examination, the application will be published in the official gazette as per Rule 84(3), along with the patent.
But the controller may refuse to restore the lapsed patent, if he is not convinced with the evidence produced. In such case, an applicant can request the controller for hearing. Such request has to be made within a month from the controller’s decision. On absence of any such request, the controller can refuse the application for restoration. On the other hand, if the controller is convinced after the hearing, the application along with the patent will be published in the official gazette as per Rule 84(3).
Another important point worth mentioning here is that, by filing a prescribed form along with the prescribed fees, any person can oppose the restoration application. But this has to be done within 2 months from the date of publication of the application of restoration. The controller will notify the patentee and would further conduct the hearing, for the decision on the case.
Further, if there is no notice of opposition filed, the controller rules the decision in favour of the applicant to restore the patent. Thereafter, upon paying the unpaid fees and additional fees within one month from the date of order of the controller allowing the application for restoration, the said decision is published in the official gazette.
Restoration of a lapsed patent involves several subjective decisions which have to be taken by the Controller. Therefore, patentees are advised to be extremely cautious about patent renewal deadlines.