CHAPTER XI: RESTORATION OF LAPSED PATENTS
This chapter provides a way to save your patent if you’ve failed to pay the renewal fees.
Section 60: Applications for restorations of lapsed patents
- (1) What it says: Where a patent has ceased to have effect by reason of failure to pay any renewal fee… the patentee… may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration…
- In plain English: You must pay a renewal fee every year. You miss the deadline (and the 6-month grace period). Your patent lapses (ceases to exist).
- This section gives you a final lifeline: You have 18 months from the original due date to apply to the Controller to restore the patent.
- Real-world example: Your renewal fee is due on June 1, 2024. You miss it. Your patent “ceases to have effect” on that date. You have until December 1, 2025 (18 months later) to file an application for restoration.
- (3) What it says: An application… shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure… and the Controller may require… further evidence…
- In plain English: When you apply for restoration, you must submit a detailed, sworn statement explaining why you failed to pay. You must prove the failure was “unintentional” (see Sec. 61).
- Real-world example: You must explain, “Our renewal records were destroyed in an office fire,” or “The reminder was sent to an employee who was in a coma,” or “Our law firm made a data-entry error.” You can’t just say “I forgot.” You must provide evidence if the Controller asks for it.
Section 61: Procedure for disposal of applications for restoration of lapsed patents
This section explains what happens after you file your application (under Sec. 60) to restore your lapsed patent.
- (1) What it says: If… the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay… he shall publish the application…
- In plain English: The Controller first reviews your application and sworn statement (from Sec. 60). If he believes your story and agrees that the failure to pay was genuinely unintentional (not a deliberate choice) and you didn’t wait too long to apply, he will “publish” your restoration application for the public to see.
- Real-world example: You prove your law firm had a clerical error. The Controller agrees this was “unintentional” and publishes your request. If you had just written “We didn’t want to pay, but now we see a competitor and we’ve changed our minds,” he would reject it as “intentional.”
- (1) What it also says: …and within the prescribed period any person interested may give notice… of opposition… on either or both of the following grounds… (a) that the failure… was not unintentional; or (b) that there has been undue delay…
- In plain English: Once your restoration request is published, any interested person (e.g., a competitor who started making the product after your patent lapsed) has a window of time to oppose your request.
- They can only argue two points:
- “They are lying! Their failure was intentional. They told us at a trade show they were abandoning the patent.”
- “There was undue delay. They knew about the failure 16 months ago but only filed the application now.”
- (2) What it says: If notice of opposition is given… the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard…
- In plain English: If an opposition is filed, the Controller will act as a judge. He will inform you (the patentee) of the opposition and schedule a hearing where both you and your opponent can present evidence and arguments.
- (3) What it says: If no notice of opposition is given… or if… the decision… is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee… restore the patent…
- In plain English: If nobody opposes your request, or if someone opposes but the Controller rules in your favor, you win. The Controller will then order you to pay all your missed renewal fees plus a restoration penalty fee. Once you pay, the patent is officially restored and back in force.
- (4) What it says: The Controller may… as a condition of restoring… require that an entry shall be made in the register of any document or matter which… has to be entered… but which has not been so entered.
- In plain English: The Controller can use this opportunity to clean up the official records. If he notices you changed your company’s address 3 years ago but never updated the patent register, he can say, “I will restore your patent on the condition that you also file the ‘change of address’ form and pay the fee for it at the same time.”
Section 62: Rights of patentees of lapsed patents which have been restored
This is a critical section. It defines what you cannot do after your patent is restored.
- (1) What it says: Where a patent is restored, the rights… shall be subject to such provisions as may be prescribed and… as the Controller thinks fit… for the protection… of persons who may have begun to avail themselves of… the patented invention between the date when the patent ceased to have effect and the date of publication of the application for restoration…
- In plain English: This protects “intervening” parties. Let’s say your patent lapsed on Jan 1, 2024. A competitor, “RivalCorp,” sees this and starts building a factory to make your invention on March 1, 2024. You file for restoration on May 1, 2024, and the request is published on May 15, 2024.
- The period between Jan 1 (lapse) and May 15 (publication) is the “intervening period.” The Controller must impose conditions to protect RivalCorp, who acted in good faith. He might rule that RivalCorp can continue to use the factory they already built, or perhaps must be paid compensation.
- (2) What it says: No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of the publication of the application for restoration…
- In plain English: This is the most important rule. You CANNOT sue anyone for infringement that happened during the “intervening period” (the time your patent was dead).
- Real-world example: Using the dates above: Your patent lapsed on Jan 1, 2024. Your restoration application was published on May 15, 2024.
- A company, “SmallFry Ltd,” imported and sold your invention in February and March 2024.
- Even after your patent is restored, you have zero right to sue SmallFry Ltd or ask them for any money for their sales in February and March.