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Restoration of lapsed patents

Sometimres it so happens that your patent becomes terminated through non payment of a renewal fees. Usually there is a procedure for late payment of renewal fees, but at other times, you may have to seek advice on the likelihood of restoration of the rights.

We can assist you with preparing the necessary application for restoration of the abandoned or terminated rights.

Restoration of European patent applications

If a European patent application is abandoned during the European regional phase( for example due to consequential and unintentional action / inaction on the part of the applicant, such as accidental abandonment including failing to pay the substantive examination fee on time; failing to respond to a communication concerning substantive examination on time; and failure to pay an annual maintenance fee on time), it becomes necessary to “restore ” the application.

Applications for restitutio in integrum are governed by article 122 EPC. Article 122 EPC states that :

“ The applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-รก-vis the European Patent Office shall, upon application, have his rights re-established if the non observance in question has the direct consequence, by virtue of this Convention, of causing the refusal of the European patent application, or of a request, or the deeming of the European patent application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress ”.

Generally, applications must be filed in writing within 2 months from the removal of the cause of non compliance with the time limit meaning an application can be made once the omitted act has been rectified, within the same 2 months period. Further, the application is also admissible within the year immediately following the expiry of the unobserved time limit.

Where the ommission is non payment of a renewal fee, there is a six month extension period within which the renewal fee may be paid as of right, with a surcharge.

Note that, the one year period mentioned in article 122 (2) EPC is a year from the original due date for renewal fee, and not from the 6 months extended period.

This means the applications to restore a European Patent application where the application has lapsed through failure to pay a renewal fee must be filed within one year of the due date of the original renewal.

There is a requirement for establishing that despite “ all due care ” being observed, the application lapsed. This requirement is relatively strict, and to satisfy it, an applicant must demonstrate that they had a functional(and satisfactory) system for observing time limits. This means that if it can be shown that failure to renew was an isolated incident, then it is more likely that restitution will be granted.

Further, if an applicant has systems which include one or more cross checks, and which have been used in the past to renew applications, then this would fulfill the EPO's criteria for a normally satisfactory system.

Ultimately, the responsibility for paying renewal fees will rest with the proprietor of that intellectual property. This responsibility is derived both from legislation and from decisions issued by patent offices in the relevant jurisdictions, where applications have been made to restore cases which have lapsed through a failure to pay renewal fees. Thus, it is crucial that you maintain a diary, with due dates for paying renewals, so as to have sufficient time to pay any due fees.

For more information, you can contact us on accounts[at]mancunium-ip.co.uk.