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- Written by FAQ on Feb 18, 2019 -

What To Do If You Realise Your Patent Has Lapsed Unintentionally

The requirements for the restoration of a lapsed South African patent include first and foremost the requirement that once you become aware of the patent having lapsed for failure to pay a renewal fee, you contact your patent attorney immediately and commence the restoration procedures without any undue delay. Whether a delay is undue will depend on the circumstances, for example, where a patent forms part of a deceased estate it may be that the party having to apply for restoration of the patent is not immediately apparent and the Executor of the estate may not even be aware of the patent or the requirement for the payment of renewals. In short, there is no specific prescribed period for applying for restoration of a South African patent from the date of its lapsing but in many countries there are hard deadlines which, if missed, lead to irrevocable lapsing of the patent, typically 1 year from the date of the due renewal fee which was missed.

Once you have realised that the patent lapsed and this was not your intention and you have contacted your patent attorney to apply for restoration thereof, you will need to collate all your documents which show that the lapsing was unintentional and that there has been no delay in bringing the application, for example, an incorrectly addressed renewal notice from a patent attorney addressed to a deceased person, to a person who has changed their address at their old address, or a copy of a renewal notice from the files of the patent attorney but which was not received by the intended addressee or at all as testified to by means of an Affidavit to which the letter is attached.

Your patent attorney will advise you and assist you with the preparation of the Affidavit and which documents to attach thereto and will then prepare Notice of Motion requesting restoration of the lapsed patent and attaching the Affidavit thereto for consideration by the Registrar of Patents, and possibly an objector if any third party decides to object to the restoration of the patent.

If the Registrar believes a good case has been made out for restoration of the patent then notification of the application will be published for a period of two months in the Patent Journal and any person may object thereto in the prescribed period and provide their Affidavit of reasons as to why restoration is being opposed, for example, that the patentee has unduly delayed the bringing of the application for restoration or that the lapsing was intentional e.g. a decision not to renew the patent to save costs but now the patent is deemed as valuable because circumstances have changed. Additionally, an objector may raise that they have commenced preparations to use the patent or are actually using the patent as from a date 6 months after the lapsing thereof and seeks compensation.

The Registrar will issue a Certificate of Restoration of the patent if the requirements are met and there is not opposition by an objector, at which time all arrear renewal fees will have to be paid. If there is opposition then the matter will be moved to the Court of the Commissioner of Patents where the Application for Restoration will be heard in accordance with the Court Rules and Procedures as modified by the Patents Act and Regulations which can take from a year to several years and incur costs of many hundreds of thousands or even millions if the matter goes to Appeal.

In the USA, if your patent has expired due to non-payment of maintenance fees, you can apply to revive it, provided you apply within two years from the end of the six-month grace period. Your petition for revival must be on the grounds that the non-payment was either unintentional or unavoidable. You must explain in the petition that you took reasonable steps to ensure that the payment was made on time and that you filed the petition promptly once you realized that it wasn’t paid. In the case of an unavoidable lapsing there is, however, no deadline.

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