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Restoration of patents refers to the revival process of a lapsed or ceased patent within the jurisdiction of India, typically occurring due to non-payment of the prescribed renewal fees within the stipulated time frame.
Purpose
The essence of the patent system lies in promoting innovation by providing inventors exclusive rights over their creations for a defined period, typically 20 years.
In the event of a patent lapse due to non-payment of renewal fees, the invention falls into the public domain, leading to the loss of these exclusive rights. Thus, restoration of patents allows inventors or patent holders to regain their exclusive rights, providing control over the usage and commercialisation of their inventions even after the patent has lapsed.
Procedure
The restoration of patents in India involves a defined procedure under the Indian Patents Act, 1970. The key steps include:
- Submitting an application for restoration within 18 months from the date the patent lapsed.
- Providing a statement explaining the circumstances leading to the failure to pay the renewal fees.
- Upon the Controller’s satisfaction that the failure to pay the renewal fee was unintentional and there was no undue delay in seeking restoration, they may publish the application for opposition.
- If no opposition is filed, or if the opposition is decided in favour of the applicant, the patent is restored.
Risks
Despite its advantages, the restoration of patents carries risks. The process may attract opposition, leading to potential legal disputes.
The controller may based on the circumstances, deny the restoration request and the lapsed patent may not be restored.
Also, the restoration cannot negate any third-party actions that occurred while the patent was lapsed, which may include manufacturing, selling, or importing the invention.
Results
Successful restoration of a patent reinstates the patent holder’s exclusive rights over the invention, allowing control over its use, sale, and importation. It also paves the way for licensing or selling the patent rights.
Costs
Restoration of patents in India incurs the following costs:
| Cost Head | Natural Persons, Startups, SME, Educational Institutes (INR) | Others (INR) |
|---|---|---|
| Government fee for filing an application for restoration of a patent | 2,400 | 12,000 |
| Government fee after restoration is approved by the Controller | 4,800 + unpaid renewal fees | 24,000 + unpaid renewal fees |
Note: The professional fee for patent attorneys and potential litigation costs can vary greatly depending on the complexity of the case and the attorney’s experience and reputation. The fees might range from 5,000 to 30,000 or more if opposition is received.
References
Relevant references in the Indian Patents Act, 1970 and the Rules thereunder include:
- Section 60: Restoration of Lapsed Patents
- Rule 84: Procedure on Application for Restoration
- Form 15: Application for Restoration of Patent
- Deadline: 18 months from the date the patent ceased to have effect
FAQs
Q. What is the deadline for applying for restoration of a patent in India?
An application for restoration must be submitted within 18 months from the date the patent ceased to have effect.
Q. Who can oppose the restoration of a patent?
Anyone can file opposition to a restoration application within two months from its publication.
Q. What happens if the restoration of a patent is opposed?
If opposed, the Controller will inform the patent holder and initiate proceedings to decide whether the patent should be restored.
Resources
More details about patent restoration can be found on:
- Indian Patent Office website
- Indian Patents Act, 1970
- Indian Patent Manual
Expert Insights
Patent experts recommend patent holders to diligently track and ensure timely payment of renewal fees to avoid inadvertent lapsing of patents. You may use IP management software or engage the service of a patent agent to assist with deadline tracking.