PA 28 – Restoration of lapsed patents

Question 1

what does section 28 concern

Answer 1

restoration of lapsed patents

Question 2

What is the time period for restoration

Answer 2

S28(1)
when a patent lapses due to a failure to pay any renewal fee, apply for restoration using PF16 within the prescribed period of 13M after the 6M grace period

Question 3

Who can apply for restoration of a patent

Answer 3

S28(2)
An application to restore can be by the proprietor, a person who would otherwise be the proprietor, or (with the Comptrollers permission) unilaterally by one of several joint proprietors

Question 4

What happens when you apply to restore a patent

Answer 4

S28(2A)
Notice of the application to restore is published in the OJ

Question 5

Under what circumstances will a patent be restored

Answer 5

S28(3)
IF the Comptroller is satisfied that the failure to fully pay in the original period or (with additional fees) in the grace period, was UNINTENTIONAL, then they SHALL restore the patent upon payment

Question 6

Is restoration ever conditional

Answer 6

S28(4)
Restration can be conditional (e.g. on sorting out registration by a new proprietor, or securing any rights of THIRD PARTIES)

Question 7

What will and will not be classified as unintentional for restorations

Answer 7

It is more lenient than the EPO all due care, and more lenient than the old reasonable care.

A breakdown in communication between an agent and client. what matters is the “directing mind” which is normally the proprietor.

Delegating to inexperienced staff etc has not yet been tested under the new standard. The “intent”

Simply changing your mind is not acceptable, unless this occurred during the grace period and an unintentional error then occurred.

Question 8

Can SPCs be restored

Answer 8

No not under S28