How to Restore a Patent in India:

In India, the term of a patent is 20 years from the date of filing, as per Section 53 of the Indian Patents Act. Once granted, a patent must be maintained by paying annual renewal fees, starting from the third year onwards. Failing to do so can result in the cessation (lapse) of the patent. However, there are provisions under the law to restore a lapsed patent under specific conditions.

What happens if you don’t pay the renewal fee on time?

If the renewal fee is not paid on time, the Indian Patent Office provides a grace period of 3 months from the date of grant to pay the outstanding annuities. Additionally, an extended period of up to 6 months is available by paying an extension fee per month.

If the renewal fee is not paid within the total grace period of 9 months, or if any subsequent annuity is missed (including the 6-month extension window), the patent will cease (lapse).

What is patent cessation and how can you restore it?

Cessation means the patent has lapsed due to non-payment of the renewal fee. However, Section 60 of the Patents Act, 1970, allows for the restoration of a lapsed patent within 18 months from the date of cessation.

Steps to Restore a Patent in India

  1. Check Eligibility: Confirm whether the patent is still within the 18-month restoration window from the date of cessation.
  2. File an Application for Restoration:
    • Submit Form 15 along with a statement of circumstances explaining why the renewal fee was not paid.
    • Include supporting evidence to justify the request.
    • Official Fees:
      • ₹12,000 for a Large Entity
      • ₹2,400 for Individuals / Startups / Small Entities / Educational Institutions

Procedure After Filing the Restoration Request

  • The Controller will examine the application and may request additional evidence (as per Rule 84).
  • A hearing may be scheduled and must be requested within one month of intimation.
  • If the Controller is satisfied that the failure to pay was unintentional, the application will be published for opposition for a period of two months (as per Rule 85).
  • If there is no opposition, and the Controller approves the request:
    • A notice will be issued to the applicant to pay the unpaid annuities and restoration fees within one month from the order date.
    • Additional official fee to be paid for restoration:
      • ₹24,000 for a Large Entity
      • ₹4,800 for Individuals / Startups / Small Entities / Educational Institutions
  • Once the payment is made, the patent will be restored, and a renewal certificate will be issued.

How to Avoid Patent Cessation?

To prevent your patent from lapsing due to non-payment of renewal fees, consider following these best practices:

  • Monitor Patent Status Regularly
    Stay updated on your patent’s legal status through the Indian Patent Office portal or a trusted IP management system. Early alerts can help you act before deadlines are missed. It is always important to check the status of the granted patent in the E-Register of the IPO site, which shows the legal status with renewal details. The regular application page will show the status as “Granted” only.
  • Pay Renewal Fees on Time
    Ensure timely payment of renewal (annuity) fees, starting from the third year after the date of filing. If fees for previous years have accumulated, clear them immediately within the permissible grace period.
  • Maintain Renewal Records
    Keep a copy of the renewal certificate, which includes the details of the last payment made and the next due date. This serves as proof of compliance and helps with internal audits or legal verifications.

In a practical scenario, most of the patents lapse during the transition from one entity to another entity; relying only on the “Grant” status from the IPO site; and not making the adequate payment as per the requirement.

Example for calculating annuity fees:

For example, if the patent application was filed on 26/06/2019 and granted on 03/04/2023, the renewal is to be paid for the following years.

3rd Year – 26-06-2021 to 26-06-2022

4th Year – 26-06-2022 to 26-06-2023

5th Year – 26-06-2023 to 26-06-2024

The first set of annuities to be paid before 3rd July 2023 and further renewal to be paid by 26th June of every year till 20th year.  

Checklist for Patent Restoration:

✔ Confirm the 18-month restoration window from the cessation date

✔ Prepare Form 15 with a statement explaining the missed payment

✔ File and pay the restoration petition fee

✔ Await Controller’s review and respond to any queries/hearing

✔ If accepted, pay unpaid annuities + restoration fee within 1 month

 

Conclusion

Restoring a lapsed patent in India is possible, provided there is timely action and valid justification. Ensure you act within the 18-month window, provide all necessary documentation, and follow the prescribed procedures to get your patent reinstated. It is economical to maintain the patent by paying the renewal fees on time to avoid incurring additional costs for the restoration procedure.  It is also advisable to maintain an annuity docketing system when managing large patent portfolios or across multiple jurisdictions, to ensure that rights are preserved.

Suganya Jayavelu