Legal Updates

Intellectual Property Law – Patent – Renewal Fees

The recent case of Re Bending Light Ltd [2009] involved a dispute relating to a patent which had lapsed due to the non-payment of the necessary renewal fees. According to s.28(3) of the Patents Act 1977 (“the Act”):

“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 that fee and any prescribed additional fee were paid within the 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”.

The applicant in this case was the proprietor of the patent in question. The renewal fee attributable to the patent was due to be paid on the 15th of September 2004. The applicant neglected to pay the renewal fee by the due date. Furthermore, the applicant did not pay the fee by the time the additional grace period provided by statute had lapsed.

The renewal fee in question amounted to £210.00.

The lack of payment by the applicant had the effect that the patent lapsed on the 15th of March 2005. Subsequently, the applicant applied for the patent to be restored. Due to the evidence presented at the hearing, it became clear that the applicant had appropriate funding available to it during the relevant period. Even so, the applicant argued that its financial situation during 2005 was critical. More specifically, it argued that during March 2005, there had been insufficient funds to pay the renewal fee which had fallen due during that period.

The hearing officer duly refused the applicant’s application for restoration of the patent. The hearing officer stated that the requirements for restoration had not been adhered to in accordance with s.28(3) of the Act (prior to amendment).

The applicant appealed against this decision.

The applicant submitted that the hearing officer had been erroneous in reaching his conclusion due to the fact that he had failed to adequately consider the evidence as to the applicant’s financial situation as a whole during 2004 and 2005.

The court held that for the purposes of s.28(3) of the Act, the proprietor of a patent had to be able to show that he had taken reasonable care in ensuring that he was in a suitable financial position to pay any required renewal fee.

Furthermore, the court stated that the phrase “reasonable care” did not need any additional explanation. It was deemed to be merely the standard that was required of a particular proprietor acting reasonably in ensuring the renewal fee was paid on time.

Therefore, in consideration of the evidence presented before the court, the applicant was deemed not to have established that it had taken reasonable care in ensuring that the appropriate renewal fees had been paid by the 15th of March 2005. Furthermore, it had not been able to show that it was not in a suitable position to make the necessary renewal payment. As a result, the court concluded that the hearing officer had made the correct decision. Accordingly, the appeal was dismissed.

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© RT COOPERS, 2009. 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.




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