PA 25 – Term of patent; PR 36-39

Question 1

What does S25 concern

Answer 1

The term of a patent

Question 2

When does a patent grant

Answer 2

S25(1)
It grants, and takes effect on the date of notice in the OJ

Question 3

What is the term or period of a patent

Answer 3

S25(1)
20 YEARS from the date of FILING (not the date of priority

Question 4

When does a patent cease to have effect

Answer 4

S25(3)
at the end of the renewal date (normally the 4th or subsequent anniversary of filing), if a renewal payment is not made by the end of the renewal period

Question 5

Is there an extension available for renewals

Answer 5

S25(4)
IF it is paid with an additional fee within SIX MONTHS GRACE (to the END of the sixth calendar month after the last month of the renewal period) then it is treated as if it never lapsed

Question 6

What happens if the renewal fee is paid in the grace period

Answer 6

S25(4)
a) anything done with or to the patent in the grace period is valid
b) intervening infringements are still infringements and
c) intervening Crown use is still Crown use

Question 7

What the should the Comptroller do if the renewal fee is not paid

Answer 7

S25(5)
The Comptroller MUST remind the proprietor if the fee is not paid

Question 8

When does a patent cease if a renewal payment is not paid

Answer 8

R36(2)
If not aid within the renewal period, then the patent ceases to have effect at the end of the renewal DATE (i.e. the anniversary of filing NOT the end of the month)

Question 9

How should renewals be paid during the renewal period

Answer 9

R36(3)
Using PF12

Question 10

How should renewals be paid during the grace period

Answer 10

R36(4)
a request for late payment uses PF12 and requires the renewal fee AND the late payment fee (increases each month)

Question 11

What happens when you pay the renewal fees

Answer 11

R36(5) Payment results in a payment certificate

Question 12

What does R37 concern

Answer 12

the first renewal

Question 13

When is the first renewal date

Answer 13

R37(2)
the renewal DATE is the fourth anniversary of FILING,

Question 14

When is the renewal period for paying the first renewal fee

Answer 14

R37(2)
During the THREE CALENDAR MONTHS PRECEDING AND INCLUDING the renewal date

Question 15

How can a grant date effect the first renewal date of a GB patent

Answer 15

R37(3)
BUT, if a GB patent grants within a three-month period ENDING ON the fourth anniversary of filing, or any time later, then the renewal DATE is three months after the grant date, and the renewal period is until the end of the calendar month in which that modified renewal date falls.

Question 16

How can a grant date effect the first renewal date of a EP(GB) patent

Answer 16

R37(4)
If an EP(GB) patent grants within a three-month period ENDING ON the fourth anniversary of filing (Case A), or any time later (Case B),

a) the first renewal DATE is either THREE MONTHS AFTER the grant date (Case A), OR the NEXT ANNIVERSARY of filing (Case B), and correspondingly

b) the first renewal PERIOD is either the end of the calendar month in which the modified date falls (Case A), or until the end of thee calendar months preceding and including the next anniversary after the mention of grant (Case B)

Question 17

When is the renewal period for subsequent renewal payments (i.e. after the first)

Answer 17

R38(2)
The renewal PERIOD is the three calendar months leading up to and including the renewal date in the third month

Question 18

When is the second and subsequent renewal date

Answer 18

R38(3)
The SECOND renewal DATE is the next anniversary of filing to occur after the first renewal date, and each SUBSEQUENT renewal DATE is the anniversary of the preceding renewal date

Question 19

What does R39 concern

Answer 19

The renewal notice

Question 20

What happens if a renewal payment is overdue

Answer 20

R39 (2)
IF a payment is OVERDUE the Comptroller must send a reminder WITHIN SIX WEEKS after the renewal period expires
(3) a)b) to the last address specified by the proprietor with such a payment, or another address if specifically informed of it, or otherwise the registered address for service

Question 21

What should a renewal payment notice contain

Answer 21

R39(4)
The reminder states that payment is overdue and the consequences of non-payment

Question 22

When does a patent term expire

Answer 22

At midnight at the end of the day preceding the 20th anniversary of filing

Question 23

What do SPCs give

Answer 23

Supplementary protections once a patent term runs out to give equitable protection for products requiring approval from a regulatory body ONLY, and only the produces authorised by the body, so these must fall within the scope of the claims.

Question 24

What happens if the GB patent grants after the second or subsequent renewal period

Answer 24

ALL the outstanding renewal fees are due with the first renewal fee

Question 25

Can you get renewal fees reduced

Answer 25

Licences of right (see S46) confer a 50% reduction BUT cancellation of the right means you have to pay ALL the discounts back…

Question 26

Can the renewal grace period be extended

Answer 26

NO - not using R108,
BUT failure of the Comptroller to send a payment reminder could be a procedural irregularity under R107, which could allow for additional time.