Restorations – the UK landscape

Restoration mechanisms are available for IP rights that may have been unintentionally lost through:

• non-payment of an annuity (renewal fee);
• inadvertently missing the filing date of a Patent Cooperation Treaty application; and
• missing the deadline for national or regional phase entry (eg, into Europe).

This report focuses on patents and patent applications, although many of the principles apply to trademarks and other registered rights.

The most common cause of rights being lost inadvertently is a missed annuity payment. This report outlines the restoration process for a patent that has lapsed for this reason at the UK Intellectual Property Office (UKIPO).

Whether the lapsed patent is a UK or an EP(UK) patent makes no difference – both are treated the same. This is because, once granted, a European patent application which is validated in the United Kingdom becomes a national patent equivalent to a patent granted in a GB patent application. Therefore, the same restoration procedure applies to both.

What do I have to do and when?
Having realised that a UK patent has lapsed, an application for restoration at the UKIPO must be made as soon as possible in order to minimise the risk that a third party will gain the right to use your invention. Once a patent has lapsed, third parties may use the invention freely and perform what would otherwise have been infringing acts. However, this can be stopped – even before the lost rights have been restored – by filing an application at the UKIPO to restore the patent (using the relevant form, PF16). Evidence supporting the restoration request need not be filed at the same time as the PF16, but may be filed later.

Once the PF16 has been filed, third parties are once again prohibited from using the invention – this will continue to be the case if restoration is successful. Any party which took steps to work the invention during the period after the patent lapsed (the UKIPO register uses the word ‘ceased’) but before the restoration application was made, is free to continue what they had started without infringing the restored patent. In other words, they can work the invention during the restoration procedure and even after restoration has been successful. This protection to third parties applies only once the patent has lapsed, and not during the six-month grace period when late annuities can still be paid.

Once the UKIPO has received the restoration request, it will set a deadline for filing supporting evidence – typically around eight weeks later.

The restoration application must be made by the party that was the proprietor of the patent at the time the missed annuity was due. Therefore, if the patent had been assigned from Party A to Party B, but the assignment had not been recorded, the restoration application should be filed by Party B, along with a request to record the assignment from Party A to Party B (using the relevant form, PF21).

While it is important to file the restoration request as soon as possible after the patent has lapsed, in reality you may not discover the lapse until much later. Restoration requests may be filed at the UKIPO up until 13 months from the end of the six-month grace period (ie, 19 months from the date on which the annuity was missed).

The meaning of ‘unintentional’
For UK patents that lapsed before January 1 2005, a proprietor needed to show that the lapse occurred in spite of ‘reasonable care’ having been taken by the proprietor or their representatives. In order for a restoration request to succeed, a proprietor must provide evidence to the UKIPO that it did not intend for the patent to lapse – that it was the proprietor’s intention to maintain the patent and thus that the lapse was unintentional. Although this ‘unintentional’ standard is lower than the old UK ‘reasonable care’ standard, and is also lower than the European Patent Office’s ‘all due care’ standard, an explanation of the circumstances which led to the error must still be provided to the UKIPO. An application simply stating that the lapse was unintentional and requesting that the comptroller restore the patent will not suffice (see Matsushita Electric Industrial Co v Comptroller General of Patents (2008) 35 RPC 2071 (EWHC)).

However, proving that the lapse was unintentional is not always straightforward. The relevant circumstances and internal decision making within the proprietor’s organisation during the period before the patent lapsed may not always be clear cut, so care must be exercised when compiling a witness statement, even with regard to this lower ‘unintentional’ standard. The UKIPO will not restore a patent if it considers that the proprietor had intended to allow the patent to lapse, and subsequently changed its mind.

Comptroller’s decision
Having received the further evidence supporting the request for restoration, the UKIPO generally responds within two to three weeks, either stating that it is minded to grant the restoration request (on the proprietor paying the outstanding annuities) or refuse it. In the latter case, the proprietor is given a period of one month to provide further submissions in support of its request for the comptroller to restore the lapsed patent. An application for restoration cannot be opposed by other parties – once made, the comptroller’s decision is final.

In the case of a successful request for restoration, and once the annuities which are due have been paid, the UKIPO issues an order of restoration.

When the lost patent has been restored, the proprietor must ensure that all docketing and records system reminders and related checks, including the proper treatment of external annuity reminders, which should have been in place and functioning efficiently to avoid any inadvertent lapses, are in place. Thus, the proprietor's records ensure that future annuities are dealt with smoothly and in a timely fashion.