How to Start a PATENT RENEWAL

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Overview of Patent Renewal

Patent renewal is crucial for maintaining the validity of a Patent. The Patent owner must ensure that the Patent is renewed regularly to keep it in force. In India, the renewal fee must be paid to the Indian Patent Office before the expiration of each relevant year. For example, the renewal fee for the 6th year must be paid before the end of the 5th year from the Patent's registration date. The Indian Patent Office offers various options to facilitate the renewal and restoration of Patents.

If the renewal fee is not paid on time, the Patent expires. However, the Patent can be restored by filing a Patent Restoration request (Form 15) within 18 months from the expiration date. The restoration, though, is subject to the Controller's discretion.

Payment of Patent Renewal Fees in India

The renewal fee must be paid to the Indian Patent Office before the expiration of the relevant year. According to the Patent Act, the Patent owner can also pay renewal fees in advance for multiple years. To make the payment, the Patent holder needs to provide the Patent number, the date of the Patent, and the relevant year for which the fee is being paid.

For additional Patents, no separate renewal fee is required, and the payment schedule remains the same as for the main Patent. If an additional Patent becomes independent, it follows the same rules as a standard Patent.

If the renewal fee is not paid by the due date, there is an option to extend the payment period by up to 6 months, provided the applicable penalty is paid. Additionally, if the Patent is granted more than two years after the filing date, the outstanding renewal fee must be paid within 3 months of the Patent grant date, as recorded in the Patent Register.

In summary, the renewal fee must be paid before the start of each subsequent year, with a six-month extension option available upon payment of a penalty.

Process of Patent Renewal in India

The process of Patent renewal in India involves the following steps:

  1. Patent Restoration:
    If a Patent expires, the owner must file a Restoration request using Form-15 within 18 months from the expiration date.

  2. Submission of Explanation:
    The Patent application must include an explanation of why the renewal fee was not paid on time. The Patent owner should provide a statement detailing the reasons for the delay in fee payment, supported by relevant documents as evidence.

  3. Supporting Evidence:
    The evidence must demonstrate that the failure to pay the renewal fee was unintentional and that there was no unnecessary delay in applying for the Patent’s restoration.

  4. Request for Additional Evidence:
    If the Controller finds the submitted evidence insufficient, they may request further documentation.

  5. Decision on Restoration:
    If the Controller does not consider the case as an obvious restoration, the applicant will be informed. The applicant must then provide further justification within one month. If the applicant fails to do so, the restoration application may be rejected.

  6. Name Change Application:
    If the Patent holder needs to change their name after the Patent has expired, they must first apply for the name change under Rule 94 before proceeding with restoration.

  7. Proof of Identity:
    If the name change occurs after expiration, the Patent owner must provide proof of their identity.

  8. Financial Hardship:
    Financial difficulties are not considered a valid reason for failing to pay the renewal fees. However, bankruptcy, which makes it physically impossible to pay the fees, may be deemed an acceptable cause for non-payment.

By following these steps, a Patent owner can restore their expired Patent and continue enjoying its protection.

Patent Renewal Fee Structure in India

In India, Patent renewal fees can be paid either through online or physical filing. Below is the fee structure for both modes of filing:

Fee Structure for Online Filings

Patent Year Individual/Small Entity Renewal Fee (INR) Standard Renewal Fee (INR)
3rd 800 / 2000 4000
4th 800 / 2000 4000
5th 800 / 2000 4000
6th 800 / 2000 4000
7th 2400 / 6000 12000
8th 2400 / 6000 12000
9th 2400 / 6000 12000
10th 2400 / 6000 12000
11th 4800 / 12000 24000
12th 4800 / 12000 24000
13th 4800 / 12000 24000
14th 4800 / 12000 24000
15th 4800 / 12000 24000
16th 8000 / 20000 40000
17th 8000 / 20000 40000
18th 8000 / 20000 40000
19th 8000 / 20000 40000
20th 8000 / 20000 40000

Fee Structure for Physical Filings

Mode of Filing Natural Person (INR/month) Small Entity (INR/month) Large Entity (INR/month)
E-filing 480 1200 2400
Physical filing 528 1320 2640

Note: For physical filings, an additional 10% late fee applies during the 6-month extension period.

This fee structure outlines the renewal fees for Patents in India, with the option to pay online or physically depending on the entity type and filing mode.

Restoration of Expired Patent

Restoring an expired patent is a complex, time-consuming, and expensive process. To restore an expired patent, the patent owner must file Form-15 within 18 months from the expiration date. The Patent Act allows for a one-month extension at the discretion of the Patent Controller. Along with the form, the patent owner must provide substantial evidence proving that the failure to pay the renewal fee was unintentional. This evidence may include letters, deeds, or copies of relevant documents.

The Patent Controller will review the information provided by the patent owner to determine if the failure to pay the renewal fee was genuinely unintentional. Additionally, the restoration application can be challenged by any interested party by filing Form-14 with the required fee within 2 months of the publication of the patent restoration application. In such cases, both the patent owner and the opposing party will have the opportunity to present their case before the Controller makes a decision.

It's important to note that the restoration of an expired patent is not always guaranteed, and the application process is not an automatic right to restore the patent.