PATENT RESTORATION

Do you need to apply for the restoration of a patent?

Occasionally patent rights and the rights in patent applications can be lost.

It will be completely unintentional. Perhaps somebody made a simple mistake. You may have missed a renewal fee, the filing deadline for a PCT application, or the deadline for a national/regional phase entry.

Although it is a relatively rare occurrence, should it happen you need to be able to call on experts who know how best to tackle the issue. And you need to act quickly so your lost rights are reinstated and restored in the UK and/or re-established at the EPO before cracks appear in your or your client’s patent protection.

The action you need to take is not dependent on the technology involved but on the circumstances and the rules of the countries involved.

This means you need instant access to experienced attorneys who know how to read the situation, map what they learn to the local legal framework, and have a long and successful record of restoring UK and European patent and design rights.

This is why we have created our specialist patent restoration team.

Sometimes US-based applicants inadvertently file international patent applications outside of the priority year.

When this happens, you will usually need to make a request for re-establishment of the right to priority before the EPO so the priority right is recognised in the European regional phase.

This request must be made even if the USPTO, acting as the receiving office for the PCT, restored the priority right. This is because the EPO does not recognise decisions made by the USPTO on the basis that the failure to file the international patent application in due time was unintentional.

Instead, the EPO will re-establish the right to priority if it can be demonstrated the failure to file the international patent application in time was despite all due care having been taken and all formal requirements having been met.

Additional points to note regarding re-establishment in Europe:

The EPO will recognise the right to priority if a request for re-establishment is made within the set time and clearly demonstrates that the filing of the international patent application outside the twelve-month priority period was despite all due care required in the circumstances having been taken.

It is important to note that the all due care requirement applied by the EPO has a substantially higher bar than the unintentional criteria applied by the USPTO.

The EPO applies a strict procedure to re-establishment matters and typically does not allow new facts to be relied upon once the request for re-establishment has been filed. Typically, detailed evidence regarding the circumstances of the late filing must be submitted at the outset to establish that the all due care criteria has been met.

Depending on the circumstances, the deadline for requesting re-establishment and submitting evidence expires on or shortly after entering the European regional phase. If it is intended to proceed in Europe and re-establish the priority right, action should be taken as soon as possible to make sure the deadline can be met.
Alternatively, patent owners can lose their rights if, for example, there has been a miscommunication with their third-party renewals agents. For example, recently various issues have occurred because of the new procedures put in place to combat the Covid-19 pandemic as well as the difficulties caused by the pandemic itself.

Even though a deadline has been inadvertently missed, sometimes re-establishment or restoration may not be necessary because a further extension is already available because of the peculiarity of the circumstances.

Our specialist team knows what action is required in every situation, regardless of the complexity of the local rules and procedures or whether the root cause was beyond your control.

Most importantly, our experienced team helps by fulfilling and progressing each step of the restoration process.

We are also on hand to take on this responsibility should you find yourself looking for new UK/European representation.

WHY SHOULD YOU CHOOSE POTTER CLARKSON'S DEDICATED PATENT RESTORATION TEAM?

As patent restorations are relatively infrequent, most firms simply pass the issue on to an attorney with a background relevant to the subject matter, for example, the attorney who handled the prosecution of the patent application. The only problem is while they will understand the technology, they may not regularly deal with restoration issues.

This means they are unlikely to have the experience needed to navigate the very specific and often intricate procedural steps involved in restoring patent rights.

This not only reduces the efficiency with which they manage the process, it can also increase the time, cost, and, in certain cases, the risk of not achieving the desired outcome.

By bringing together the attorneys with the greatest understanding and the most experience of the reestablishment processes, we are able to provide a best-in-class service most IP firms are unable to match.

This means you know you always have access to:

An experienced team with a wealth of specific restoration experience in the UK and Europe, skilled practitioners who know every step of the restoration process inside out.
A team supported by specially designed workflow processes to improve speed and efficiency.
A proven way of working with a track record of excellent case outcomes.
Strength in depth and experience to ensure you receive immediate assistance when required.

If you would like to find out more about our restoration services, please contact us today at restoration@potterclarkson.com.