Reinstatement of a patent application is different to the process required to restore a granted patent that has lapsed due to missing payment of a renewal fee (more details on this process can be found in this article).
A patent application is not an enforceable right in itself.
This is in contrast with a granted and in force patent which can be enforced against a potential infringer. However, patent applications can give rise to some provisional protection once they are published and can also deter potential infringers even if the application is not subsequently granted.
Patent applications typically have several rounds of examination before the application is granted. In most cases, an examiner will issue an examination report with a specified time limit for replying. The specified time limit is typically four months (although the time limit can range from two months to six months depending on the complexity of the case).
By failing to respond to one of these examination reports or failing meet certain procedural requirements within the prescribed time limits, the application may be deemed to be withdrawn. If the application is not considered in order for grant by the end of a compliance period, the application may be refused. The compliance period is the later of four and a half years from the date of filing date or 12 months from the issuance of the first examination report.
In such a case, if no action is taken the application will be lost irrevocably. Furthermore, if the application is published, it will form part of the state of the art and can be cited against any subsequent patent applications relating to the same or similar subject matter. It can therefore be critical in some cases to revive (i.e. reinstate) lapsed patent applications.
Section 20A of the UK Patents Act specifies the circumstances for reinstating a patent application that has been either refused or treated as having been refused or withdrawn (i.e. terminated) due to the applicant's failure to comply with a requirement within a prescribed or specified time limit. The criteria to be met and the effect of reinstatement are described in the sections below.
REINSTATEMENT CRITERIA
The application must have been refused, treated as refused, or withdrawn directly because of the applicant's failure to comply with a requirement specified in the Act or rules.
The applicant must request reinstatement, complying with relevant rules in writing on Patent form 14 and paying an official fee of £135. A reinstatement request must be filed within 12 months beginning immediately after the date on which the application was terminated. For example, if the deadline for responding to an examination report expired on 15 November 2023, a request for restoration must be made by 15 November 2024.
The failure to comply with the requirements specified in the Act or rules the must have been unintentional. The reason the applicant failed to comply with the time allowed should also be stated and be supported by evidence.
EFFECT OF REINSTATEMENT
If the application was published before termination, any act by a third party that would have constituted an infringement of rights in the patent conferred by publication is treated as an infringement if done when it was possible for the period for responding to be extended or if it was a continuation or repetition of an earlier infringing act.
However, if someone began an act in good faith after the period for response could be extended but before a notice of reinstatement was issued, they would have the right to continue doing that act despite reinstatement. This is known as an accrued third party right and signifies the importance of reinstating patent applications as soon as possible.
If an application is reinstated, the applicant will have a further period set by the comptroller within which they must comply with the requirements. This further period shall not be less than two months.
REFUSAL OF REINSTATEMENT REQUEST
If the request for reinstatement is not initially granted by the Patent Office, it is possible to request a hearing within one month of the decision to not reinstate. If a hearing is not requested a formal notification will be received stating that the application has been deemed withdrawn.
Reinstating a patent application can be complex, so it is essential to follow the relevant rules and procedures carefully. If you have any questions or need any assistance with applying for reinstatement of a lapsed patent application in the UK, please contact restoration@potterclarkson.com.
