Term, Renewal Fees and Restoration

Question 1

When does a patent come into force?

Answer 1

Patent grants and takes effect on the date of notice in the OJ.

Question 2

What is the term of a GB patent?

Answer 2

20 years from the date of filing (not the priority date)

NB a patent’s term expires at midnight at the end of the day preceding the 20th anniversary

Question 3

When does a patent cease to have effect? (After non renewal payment)

Ignoring grace period for paying renewal fee

Answer 3

At the end of the renewal date (normally the 4th or subsequent anniversary of fiing) if a renewal fee is not paid by the end of the renewal period

e.g. if anniversary is June 20th, you have until June 30th to pay, but patent will retroactively cease on June 21st if not paid

Ignore grace period for renewal fee payment in this example

Question 4

Who can pay a renewal fee?

Answer 4

Anyone can pay a renewal fee (at UKIPO or EPO). They do not need to be the applicant or their representative or as the address for service

Question 5

What is the grace period?

(Renewals)

Answer 5

There is a 6 month grace period for paying the renewal fee (+ an additional fee) - extends to the end of the sixth calender month after the last month of the renewal period

e.g. if renewal date = 26th June

renewal period ends 30th June

grace period ends 31st December

NB first month is free

Question 6

What is the effect of paying a renewal fee in the grace period?

Answer 6

Patent is treated as if it never lapsed, so:

• anything done with or to the patent in that grace period is valid;
• intervening infringements are still infringements; and

Question 7

When must the Comptroller send a renewal reminder?

Answer 7

s25(5) - must send a reminder to proprietor if renewal fee not paid.

R39 - if payment is overdue, must send a reminder within 6 weeks after the renewal period expires to the last address specified by the proprietor (or another address if specifically informed of it - good practice to make yourself the “address for service” in FD1)

A failure of the Comptroller to send a reminder could be interpreted as a procedural irregularity under R107, allowing for the possibility of additional time to pay the fees

Section 25: Term of patent

Question 8

What is normally the first renewal fee and what is the renewal period?

Answer 8

The first renewal fee is due on the fourth anniversary of filing (i.e. start of the 5th year) and the renewal period is the three calendar months preceding and including the anniversary.

e.g. if 23rd June is the renewal date, the renewal fee can be paid in April, May or June

Question 9

When is the first renewal fee due if the GB patent grants within the three month period preceding the fourth anniversary of filing or later?

Answer 9

The renewal date is 3 months after the grant date, and the renewal period is until the end of the calendar month in which the modified renewal date falls

Question 10

When is the renewal fee due for an EP(GB) that grants within the three month period preceding the fourth anniversary of filing?

Answer 10

The first renewal date is three months after the grant date and the renewal period is until the end of the month in which the modified renewal fee falls

Question 11

When is the first renewal fee due for an EP(GB) that grants after the fourth anniversary of filing?

Answer 11

The first renewal period is until the end of the three months preceding and including the next anniversary after mention of grant.

NB no need to pay renewal fees to UKIPO for any period prior to grant of an EP(GB) (i.e. no need to double pay)

Question 12

Scenario:

If a GB application filed on 10th January 2010 is granted on 7th June 2015, when is the first renewal fee due?

What if it was a EP(GB)?

Answer 12

The fourth anniversary (10th Jan 2014) and firth anniversay (10th Jan 2015) have already passed. Therefore the first AND second renewal fees will fall due on 30th September 2015.

For an EP(GB) renewal fees are not payable to the UKIPO for any period prior to the publication of grant (i.e. no need to double pay), so the first renewal fee would be due on 31st January 2016.

Question 13

What is the renewal date and renewal period for the second renewal fee and all subsequent renewal fees?

Answer 13

Renewal period - three calendar months leading up to and including the renewal date in the third month.

Second renewal date - the next anniversary of filing (not anniversary of the first renewal fee) and each subsequent renewal date is the anniversary of the preceding renewal date.

Question 14

From when are renewal fees paid for EP applications?

Answer 14

From the 2nd anniversary of filing (3rd year renewal fee)

Question 15

When are UK renewal fees paid from?

Answer 15

4th anniversary of fiilng (5th year renewal fee).

NB you never need to double pay a renewal fee for an EP application which then becomes a GB.

Question 16

What happens if the renewal fee and late fees are still not paid by the end of the grace period (R41)?

Answer 16

Comptroller will send a notice within 6 weeks and point out the possibility of restoration under s28

Section 28: Restoration of lapsed patents

Question 17

Are renewal periods extendable under R108?

Answer 17

NO

Question 18

What types of patent are Supplementary Protection Certificates (SPCs) available for?

Answer 18

SPCs are available typically for medical and plant products

Question 19

Scenario:

If the EPO revokes and subsequently restores an EP(GB) patent, and in the intervening period a UK renewal fee fell due, when does it have to be paid?

Answer 19

The renewal fee must be paid by a modified renewal period of two months after restoration (e.g revoked in opposition and restored on appeal)

Question 20

What is the restoration period and how do you apply for restoration?

Answer 20

When a patent lapses due to a failure to pay any renewal fee, there is a 13 month restoration period following the 6 month grace period (13 + 6).

To apply FORM + FEE along with evidence to show that failure to pay was unintentional

NB restoration can be conditional (e.g. on sorting out registration or securing rights of third parties)

Question 21

Who can apply to restore a patent?

Answer 21

The proprietor, a person who would otherwise be the proprietor, or with the Comptroller’s permission unilaterally by one of several joint inventors

NB exclusive licencees cannot apply for restoration

Question 22

Is an application to restore a patent published in the OJ?

Answer 22

Yes - see s28(2A)

Section 28: Restoration of lapsed patents

Question 23

When is the end of the restoration period?

Answer 23

13 calender months from the end of the six month grace period, which itself ends at the end of the sixth month after the renewal period ends

Question 24

What happens if an application to restore does not contain evidence?

Answer 24

The Comptroller specifies a period of time to supply it

Question 25

What happens if a request to restore is refused?

Answer 25

The Comptroller will notify the applicant of the negative decision; then the applicant has one month from the notice to request a hearing (if not patent is lost).

If a hearing is requested, the applicant will be heard before the Comptroller makes a final decision.

Question 26

What is the time limit to comply with a decision to allow restoration?

Answer 26

The UKIPO issues a deadline (typically 2 months) in which to file PF12 and pay all outstanding fees, before the restoration is enacted and advertised.

Question 27

Can Supplementary Protection Certificates (SPCs) be restored under s28?

Section 28: Restoration of lapsed patents

Answer 27

No - see Tulane [2012] EWHC 932 (Pat)

Question 28

What is the effect of restoration?

Answer 28

s28A(2) - anything done in the period between expiry and restoration in relation to the patent is valid.

s28A(3) - an infringement is still an infringement if:

• it was done in the six month grace period and/or
• it was a continuation or repetition of an earlier infringment

NB if you successfully restore and then try to bring an infringement action for acts done while lapsed, damages during this period will only be awarded with discretion

s28A(4) - if after the grace period and before publication of the application to restore, an otherwise infringing act is done (or serious and effective preperations to do an act were begun) in good faith by a third party, they may continue to do so

Section 28: Restoration of lapsed patents

Question 29

What do third party rights allow a third party to do?

Answer 29

It is not a transferable licence (can only be transferred along with the business) and they cannot licence others to do the infringing acts.

They can only continue acts which they have done or made serious and effective preparations to do in the period.

They can allow partners within their business to work the invention too.

No repercussions can be taken against a recipient of a would-be infringing product obtained from a third party with such rights.

Question 30

When will 3rd party rights not accrue after a patent has lapsed?

Answer 30

Only when the UKIPO has made an error. Per R107, this means that “the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the Comptroller, an examiner or the patent offce.”

It is at the discretion of the Comptroller as to whether to allow third party rights (see MoPP 123.06)

Think: did the UKIPO make you aware of the loss of rights?

Question 31

Who can apply for a patent to be surrendered?

Answer 31

The proprietor

Question 32

Can an application to surrender a patent be opposed?

Answer 32

Yes, by any third party (e.g. a licensee)

Opposition to surrender is via inter-partes proceedings

Question 33

When does surrender of a patent take effect?

Answer 33

From the date of notification in the OJ

Question 34

Can one still sue for infringements that occurred prior to surrender of a patent?

Answer 34

No

Question 35

How is an application for surrender made?

Answer 35

Given in writing (e.g. use PF2)

State that there is no pending action for revocation or infringement (i.e. likely to question validity which can result in retroactive loss)

Where an action is pending, provide full details of the action.

NB this is because a revoked patent is treated as never being valid, so e.g. a licensee could sue for unnecessary payments

Question 36

Can a surrendered patent later be revoked?

Answer 36

Yes - this would then allow licensees to claim back their license fees