7) Duration, Renewal, Restoration and Surrender

Question 1

Section 25
Term of Patent

Answer 1

(1) Grant takes effect on the date of notice in the journal. The patent term is 20 years beginning with the filing date.

…

(3) A patent ceases to have effect retrospectively at the end of the renewal date if the renewal fee is not paid [with form] before the end of the renewal period.

(4) If the renewal fee is paid [with form and an additional late fee] during the sixth month grace period (which ends on the last day of the sixth calendar month after the last month of the renewal period), the patent shall be treated as if it had never lapsed, and thus
(a) anything done with or to the patent in that grace period is valid;
(b) infringing acts carried out during that grace period count as infringements.

(5) The Comptroller must notify the proprietor regarding renewal fees on three occasions:
(a) before the end of the renewal period if not paid yet;
[(b) within six weeks of the end of the renewal period if the fee was not paid on time;
(c) after expiry of the grace period if the fee was not paid, referring him to s28 (restoration).]

Question 2

Renewals
(Rules for renewal dates and periods)
Rules 36-39

Answer 2

By default, the first renewal date is the fourth anniversary of the filing date and the renewal period is the three calendar months preceding and including this anniversary.

However, in the particular case where a GB patent grants within the three month period preceding the fourth filing date, or later, then the first renewal date is the three month anniversary of the grant date and the first renewal period is from grant till the end of the calendar month in which the renewal date falls.

In the particular case where an EP(GB) grants within the three month period preceding the fourth filing date, or later, then the first renewal date is the later of (A) the three month anniversary of the grant date or (B) the next anniversary of the filing date after grant. In case (A), the renewal period is from grant till the end of the calendar month in which the first renewal date falls, whereas in case (B) the renewal period is the three calendar months preceding and including the first renewal date.

The second renewal date is the next anniversary of filing to occur after the first renewal date, and each subsequent renewal date is simply the anniversary of the previous renewal date. The second renewal period, and every subsequent renewal period, is simply the three calendar months preceding and including the renewal date.

Question 3

Section 28 + Rule 40
Restoration

Answer 3

This section applies if the patent has lapsed because the renewal fee and late fee were not paid by the end of the grace period.

The Comptroller will grant a request for restoration if it is made on the form within 13 months of the end of the grace period, and if he is satisfied that the failure to pay on time was unintentional. The applicant must provide evidence of this and if he does not the Comptroller will set a deadline for providing it.

A joint applicant can request restoration unilaterally, with the Comptroller’s permission. Alternatively, the restoration can be requested by someone else who should actually have been entitled to the patent.

Notice of the request for restoration must be published in the journal.

If the request is granted, the Comptroller shall restore the patent upon payment of the missed fees and subject to any further conditions he sees fit. Restoration will be published in the journal.

If the request is refused, the applicant has one month from notice of refusal to request to be heard before the Comptroller.

Question 4

Section 28A
Effect of Restoration

Answer 4

…

(2) Anything done in relation to the patent during the period between expiry and restoration is valid [i.e., if it was sold to someone].

(3) Anything done during that period which would have been an infringement if the patent were in force shall be treated as an infringement
(a) if it was done before the end of the renewal grace period; or
(b) if it was a continuation or repetition of an earlier infringing act.

Usual third part rights for those acting in good faith after the end of the grace period (specifically, the notification of non-payment of the renewal fee) and before publication of restoration request.

Question 5

Section 29
Surrender

Answer 5

(1) The proprietor can at any time apply to surrender his patent.

(2) Anyone can oppose the surrender.

(3) If the Comptroller is satisfied that the patent may properly be surrendered [i.e., if there is no pending action before the court for infringement or revocation], then the patent shall cease to have effect from the date of notice in the journal, and one cannot then sue for infringements before that date.

[NB if a patent is revoked then it’s like it never existed. So that has serious complications if the patent has been licensed or been enforced in the past. A proprietor, realising that revocation is imminent, may then wish to surrender his patent, as this only has effect from the date of notice and is not retroactive all the way to grant. That’s why a patent cannot be surrendered if there is pending court action regarding it for infringement (which could lead to revocation) or revocation itself.]