Once a patent has been granted for an invention in India, the next vital step is to ensure that it is renewed regularly and unceasingly. Section 53 read with Rule 80 of the Indian Patent Act deals with the renewal of patents. This can be done by the payment of Patent Renewal Fees diligently during the lifetime of the patent, which is 20 years.
The payment of the renewal fees is done to the Indian Patent Office before the expiration of the year. For example, the renewal fee for 10th year has to be paid before the expiration of 9th year from the date of patent. The patentee can pay advance renewal fee for 2 years or more years as per the Indian Patents Act.
For the payment of the renewal fee, the patentee has to mention the relevant patent number, date of grant of patent and the year in respect of which the renewal fee is being paid, in order to make a request for the renewal.
In the case of addition to the patent no renewal fee is required to be paid and the fee payment schedule remains the same as of the main patent, but in the case where addition becomes an independent patent, it shall follow the procedure of an independent ordinary patent.
The renewal may be of extended up to 6 months if the prescribed penalty fee is paid by the patentee for the renewal. If the renewal fee is not paid within the extended period, the patent ceases to exist in the eye of law and passes on to the public domain.
It is important to note that if the patent is granted later than 2 years from the date of filing of the application; the pending fee payment has to be paid within a period of three months from the date of the patent grant as mentioned in the patent register.
###Patent Renewal In India – Fee Schedule
When the payment is made online
|Patent Year||Individual / Small Entity Renewal Fee||Standard Renewal Fee|
|3rd||800 / 2000||4000|
|4th||800 / 2000||4000|
|5th||800 / 2000||4000|
|6th||800 / 2000||4000|
|7th||2400 / 6000||12000|
|8th||2400 / 6000||12000|
|9th||2400 / 6000||12000|
|10th||2400 / 6000||12000|
|11th||4800 / 12000||24000|
|12th||4800 / 12000||24000|
|13th||4800 / 12000||24000|
|14th||4800 / 12000||24000|
|15th||4800 / 12000||24000|
|16th||8000 / 20000||40000|
|17th||8000 / 20000||40000|
|18th||8000 / 20000||40000|
|19th||8000 / 20000||40000|
|20th||8000 / 20000||40000|
*On Physical filing – Above fees + 10%
###Patent Renewal Late Fee (during 6 months extension period)
|Mode of filing||Natural Person||Small Entity||Large entity|
##Restitution of Patent
When the patent ceases to exist because of the non-payment of the renewal fees, the remedy available to the patentee is ‘restoration of patent’ This can be done by filing Form 15 within 18 months from the date on which the patent expired. The patentee should provide substantial evidence to prove the reason for non-payment and for the condonation of delay. The condonation of delay is to be decided by the Controller.
###Process of Restitution:-
Application for restoration of lapsed patent should be made by the patentee or his legal representative under section to Sec 60 read with Rule 84.
Application is to be filed within the 18 months from the date of lapse. However, in some cases one month extension can be sought under rule 138 of Patent Rules, which is a discretionary power of the controller.
Submit the prescribed form with prescribed fees, which is INR12000/6000/2400 for other than small entity /small entity/natural persons respectively.
Submit substantial evidence to support that the non-payment of renewal fee was unintentional.
The Application must include statement setting out the circumstances which led to the failure to pay the renewal fee within the stipulated time. This statement shall be supported by evidence and copies of any document referred to.
The evidence must support the patentee’s claim that the failure to pay the renewal fee was unintentional.
The controller may call for further evidence.
If the patentee had deliberately elected not to pay a fee under an erroneous supposition that he secured no advantage by doing so, he cannot claim that the failure to pay was unintentional even though he would have made the payment if he had known the true position.
If the Controller does not agree that a prima facie case for restoration has been made out, the applicant is so notified and unless the applicant states within 1 month that he desires to be heard, the application may be dismissed.