Patent Renewal And Restoration
“To keep a patent in force, the renewal fees specified in the First Schedule shall be payable at the expiration of the second year from the date of the patent or of any succeeding year, and the same shall be remitted to the patent office before the expiration or the second or the succeeding year.” – Rule 80 of the Indian Patent Rules.
Every Patent Invention registered has to be renewed continuously. Patent renewals are a different kind of renewal system, where the applicant has to renew the application from the second year of the grant of patent. Patent renewals are mandatory to extend the validity and exclusivity of its grant. Unlike trademarks and designs, the renewals in the patent are to be done even during the validity period. A patent in India is valid for 20 years, after which the validity expires and the patented invention enters the public domain. However, the renewal system mandates the applicant/inventor to renew the invention after the second year of the patent grant expiry on an annual basis. The Act clearly specifies the mechanism or system of renewal and what has to be done when. Sounds tricky and cumbersome, but nothing is above the law, and to preserve the protection, the protocol has to be followed.
Documents Required For Patent Renewal
No separate documents are required for patent renewal. Payment of renewal fees is sufficient for the renewal of the patent registration. The patentee can either pay the fees before the expiry of the preceding year or pay in advance.
Patent Renewal Procedure
The Patentee/ Inventor must pay the renewal fees until the expiry of the patent grant- 20 years. It has to be paid on an annual basis. Once the fees are paid, a Request to the controller has to be made for renewal. Upon the request, the Controller of the patent shall extend or renew the patent.
Extension of Patent Renewal
In case you have missed paying the renewal fees before the expiry of the preceding year, an extension of up to six months can be sought for renewal from the Controller, on a condition precedent that the inventor shall be ready to pay the penalty fee required to be paid for the patent renewal. If the renewal fee is not paid within the extension period, the patent will no longer be valid and shall enter the general public domain for anyone to use the invention.
Restoration of Expired Patents
An important fact is that if the patent is granted within two years from the date of filing of the application, then the pending fee payments shall be paid within three months from the actual grant date of the patent mentioned in the patent register. In case of expiry due to non-renewal, the patent can be restored by filing a Form 15 within 18 months from its expiry date. The patentee is required to submit all relevant documents and evidence highlighting the reason for non-payment of renewal. After consideration of facts and evidence, the Controller has ordered restoration. The decision for restoration is subject to the sole discretion of the Controller. The patentee must keep in mind the importance of regular fee payment for the patent renewal since the remedies of restoration of the patent are costly. Maintaining a patent renewal timeline is essential for the lifespan of a patent in India.