A patent protection generally lasts for 20 years. But to maintain such protection, certain fees are required to be paid at fixed intervals. These are called maintenance fees.

But what happens if you fail to pay the maintenance fees within the given time limit?

The answer is simple. If you do not pay, you do not get the service. The protection stops, and your patent is deemed abandoned. In such circumstances, anyone can use your patented invention without your permission.

However, you do not need to panic. Most jurisdictions provide a window to restore such abandoned patents. But you need to act carefully and quickly.

Even though each jurisdiction has its own procedure, timeline, and method of evaluation, the basic requirements are usually similar. Here is what you need to know::

1. The time left – Every patent office has strict restoration timelines. For example, in the United States (U.S.), it is 2 years from the date of lapse. In Europe, it is within 2 months from when you become aware of the missed deadline, and no later than 1 year from the missed deadline. In India, it is within 18 months from the date the patent ceased to have effect. So before doing anything else, confirm the exact deadline in your jurisdiction and check whether you are still within the restoration period.

2. Filling Petition  –  If you are within the timeline, then that’s good, there is still a hope. Since you are asking to revive/restore something that is already dead, the Patent Office would need a reason from you, why didn’t you pay the renewal fees within the given time period? 

This is why most patent offices have the applicability for a restoration petition (a statement filed, stating the reason for the cause of delay in payment). But few things are there that you need to keep in mind, while drafting such a petition.

a) Unintentional Reason: While the reason needs to be truthful and genuine, it  also needs to show that it was “unintentional”. Meaning something which despite taking reasonable measures,couldn’t be avoided.  Now if we say, “I didn’t have the money to pay for the maintenance fees”, or that “you forgot about the deadline because of your prior work”; then that may seem to be a genuine reason but not an unintentional one.  However, if the reason is like “the payment system was not working properly”, “my bank account got frozen” or “that I missed the deadline because my patent attorney went absent and all the necessary information about my application, were with him”, then these may be considered as unintentional reason for missing the deadline.

b) Evidence: Apart from an unintentional reason, many patent offices also ask for authentication of your reason, i.e. proofs. This means having evidence to show that as patent owner/applicant, you had taken all the reasonable steps towards making payment of maintenance fees, but due to the unintentional reason, you weren’t able to. This may include emails, internal communications, or records showing attempts to comply etc.

3. Payment of Restoration Fees and Maintenance Fees: Now there is no denying of the fact that this process won’t be free of cost. So when it comes to filing a restoration petition, you also need to pay a restoration fee and possibly the outstanding maintenance fees (which can be before or after the restoration process-depending on the laws of the jurisdiction).

4. Aftermath process: In some jurisdictions filing of restoration petition and fees, may not be the end of it. Take example of India and Australia, here after filing for restoration petition, the petition goes under “open for opposition period” (similar to pre-grant opposition in a patent), where if any third party has any opposition against restoration of your patent, then during such time, they can raise the same.

Takeaway:

The process of patent restoration due to failure of payments is not easy. It is risky and costly. 

Because once your patent has been marked as abandoned, anyone may come and use the patent, within the period of restoration process. Moreover, the ultimate decision whether to restore your patent depends entirely on your respective patent office.

However, if your reason is genuine, and you have taken all the reasonable efforts to make payment, it is not impossible and you can still restore your patent.

The patent restoration process is a depiction of Eminem’s quote: “if you had one shot, or one opportunity. To seize everything you ever wanted in one moment. Would you capture it or just let it slip?”

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Interested in innovation, technology and IP protection? I have insights into how technology protection works from my years in the field, and I’ll be sharing more in future newsletters.

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