Intellectual Property Law – Patent Law – Expiry of Patent – Late Renewal Fees

The case of Betson Medical (Ireland) Ltd v Comptroller General of Patents [2010] involved a decision relating to section 28(3) of the Patents Act 1977, which stated:

“If the comptroller is satisfied that - (a) the proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period or that the fee and any prescribed additional fee were paid within six months immediately following the end of that period, the comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.”

Prior to the proceedings in this case, B had filed an application for a patent in December 1996. Subsequently he assigned the application to the appellant in this case in October 1999. The appellant in this case was a company that B had incorporated for the purposes of the exploitation of his invention.

Even though both B and the appellant in this case were aware of the renewal date, due to financial constraints, the renewal fee was not paid for the patent in December 2003.

B had sought funding from both banks as well as private investors, however, the money was not made available to him in order to pay the renewal fee or the additional fee within the subsequent six months allowed under section 25(4) of the Patents Act 1977.

Accordingly, the patent in question lapsed.

Then, in July 2005, an application for restoration was filed in accordance with rule 41(1)(a) of the Patents Rules 1995.

However, on a preliminary view, it was decided that the requirements for restoration had not been met. The appellant duly requested a hearing, and the date for the hearing was set for September 2009. The application was considered under section 28(3) of the 1977 Act (as it stood at the time). The respondent refused the appellant's application to restore its patent in November 2009, due to the fact that it was deemed that B had not exercised reasonable care to see that the renewal fee was paid in time, or during the six month grace period.

The appellant appealed against this decision. The issue in question was whether the appellant, as the proprietor of the patent, or B, had taken reasonable care to see that the renewal fee and the prescribed additional fee in respect of the patent were paid by the expiry of the grace period.

The appeal was dismissed.

It was held that on the evidence considered in this case, B had faced severe financial difficulties in the period up to and including June 2004. He had made strenuous efforts to secure funding to ensure the commercial exploitation of his invention and to pay the renewal fees in respect of the patent.

However, it was deemed that the question that had had to be considered by the respondent was more specific.

B had not sufficiently demonstrated that he had taken reasonable care to see that the limited sum in respect of the patent was paid by June 2004. Accordingly it was concluded that the respondent comptroller had been correct in its finding.

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© RT COOPERS, 2010. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.