Litigation Manual (online version)

Chapter 28: Restorations

Sections (28.01 to 28.72) last updated: March 2016

Introduction

28.01

If a GB or EP (UK) patent has ceased due to failure to pay the relevant renewal fees, an application for restoration of the patent may be filed under section 28 (see rule 40). An application can be filed, for example either by a patent attorney acting on behalf of the patent proprietor or may be filed by the proprietor themselves, that is, the applicant for restoration. The applicant may be one or more joint proprietors, or anyone who would have been entitled to the patent if it had not ceased.

28.02

An application must be filed by the end of the 13th month from the last day it was possible to pay the renewal fee on the patent, i.e. 6 months from the date the patent ceased. The 6 months following the renewal date is sometimes referred to as the grace period and is the period in which the patent can be renewed with payment of a surcharge. An application to restore a patent that ceased on 20 August 2008 must therefore be filed by 31 March 2010.

28.03

To make an application, an applicant needs to file patents Form 16 with the appropriate fee. The form should be accompanied by evidence supporting the application. The letter shown in Annex 1 - Restoration advice letter should be issued to applicants enquiring about restoration.

28.04

The applicant no longer has to provide the office with a sworn statement. Evidence is now acceptable in any written format. There is no provision in the Act or Rules that provides for third parties to oppose an application for restoration

A3 Initial actions

28.05

On receipt of Patents Form 16, the A3 should check:

  • whether the form has been filed within the 13 month period allowed. The period begins at the end of the 9 month period allowed for paying your renewal fees. If the application has been filed late or the fee has only been partially paid, a minute should be sent to the Restorations Manager pointing this out
  • whether the application for restoration has been made by the proprietor or any other person entitled to the patent. If restoration has been applied for by someone else the A3 should write to the applicant requesting an assignment or change of name certificate, so we can update our register to the new owner.
  • whether the address for service details on the Patents Form 16 match those currently on the register. If the applicant has entered ‘YES’ in box 6 of the Form 16 and they are not currently the address for service, the A3 should send Register Admin a minute to update the register accordingly. Sometimes the proprietor will use a different agent to registered address for service just for the purpose of processing the restoration request. If this is the case, or the applicant has entered ‘NO’ in box 6 of the Form 16 do not refer the case to Register Admin as the applicant still wants to keep his registered address for service. Care must be taken when issuing letters on these types of cases
  • whether evidence has been filed. If no evidence has been received issue the letter at Annex 1b - Letter to request evidence requesting evidence. Diary the case in Diary R for two months to await the evidence

The A3 should also:

  • redact the letter filed, by removing any personal signatures or personal e-mail addresses and update the status of each document to identify it as either open to public inspection (OPI) or not open to public inspection (NOPI)
  • enter the details of the application in the Exparte Post Grant SharePoint List, allocate a case reference number
  • update OPTICS using the REG FIL option – menu 11. There is no need to suppress the Journal entry PDAX ACTION:– Use OPTICS Prints DIS FUL and DIS HIS to complete a restoration procedure sheet (See Annex 1a - Restoration Procedure Sheet). Create a file note and place the restoration procedure sheet on Pdax minute.
  • if the application relates to an EP patent, obtain a copy of the patent specification and import into PDAX (See 25.14). If the application relates to a GB case, Index and Scanning will retrieve the file from NMP and scan it into PDAX if it is not already scanned on to the dossier
  • send a message on PDAX to the Restorations Manager entitled ‘New Case – PDJ (date)’. This message will let the Manager know what date the application for restoration will appear in the Patents Journal and the ten day target for examining the evidence will begin from then

Evidence

28.06

If evidence is filed later than the Patents Form 16 the A3 should:

  • redact the covering letter, removing any personal signatures or personal email addresses
  • update the Exparte Post Grant SharePoint List
  • Send a message on PDAX to the Restorations Manager entitled ‘New Docs’

If the document is filed directly by fax to Litigation Section the A3 should import the document into PDAX and send a message to the Restorations Manager.

Extension of Time for filing evidence

28.07

Under rule 109 of the Patents Rules 2007 applicants for restoration may apply in writing for an automatic EOT of two months for filing evidence. They will need to apply before the two month extended period has expired. When a request of this nature is received the A3 can issue the standard letter allowing an automatic extension of two months (See Annex 13 - Extension of Time Letter). Any further requests for EOTs need to provide reasons why more time is required and are at the discretion of the comptroller. When requests of this nature arrive the A3 should seek the advice of the Restorations Manager before issuing a response (See Annex 14 - Further Extension of Time Letter).

Restorations Manager initial check

28.08

[Deleted]

28.09

[Deleted]

28.10

[Deleted]

28.11

If the application for restoration has not been filed on time, write to the applicant explaining they have missed the deadline (see Annex 2 - Letter to respond to a late application for restoration).

28.12

Where the office has made an error that prevented the proprietor from paying the renewal fees or applying for restoration on time, they may be able to apply for re-instatement of their application under rule 107 (see 28.61 to 28.72).

Examination of the application

28.13

Having analysed the evidence provided, the Restorations Manager will decide whether restoration should be allowed. They will also redact any personal or sensitive information found in the evidence so that redacted copies of the documents can appear on IPSUM.

28.14

The applicant for restoration no longer has to provide the office with sworn evidence. Although the majority of applicants still send in witness statements, it is permissible for them to file their evidence in any written format.

28.15

When analysing the evidence it must be determined whether the failure to make the renewal payment was unintentional. The proprietor must prove that at some point when the fee was due to be paid (from 3 months before the annual renewal date until the end of the sixth month following the renewal date) they intended to make the payment.

28.16

If the application for restoration is allowed summarise the decision in a minute. The minute should also instruct the A3 to issue the ‘Offer to Restore’ Letter (see 28.21) and Annex 3 - Offer to Restore Letter. PDAX ACTION:– Create a minute in PDAX and message the A3

28.17

If the Restorations Manager decides not to allow the application for restoration, they will write a brief summary of the decision in a minute and instruct the A3 to issue a ‘Minded’ letter to the applicant informing them that we are minded to refuse the application. A month should be given to allow comments (see Annex 4 - Minded Letter).The A3 should diary the application for 1 month to await a reply. PDAX ACTION:– Create a minute in PDAX and message the A3

28.18

If further evidence is required, the A3 should write to the applicant giving them 2 months to file any further documents (see Annex 5 - Further evidence request letter). The Restorations Manager should create a minute in PDAX stating the evidence they require. They should then message the A3 to issue the standard letter and diary the application for two months to await a response. PDAX ACTION:– Create a minute in PDAX and message the A3

Managing the application

28.19

On receipt of a message from the Restorations Manager the A3 should issue the relevant letter and import a copy into PDAX, update the Exparte Post Grant SharePoint List, enter the relevant diary date in Diary R and enter a minute on PDAX showing what you have done.

28.20

The A3 should check the diary dates on a regular basis. If the diary date has matured and no correspondence has been received the A3 should issue a minded letter (see 28.17).

If the applicant files a response before the diary expires send a message on PDAX to the Restorations Manager informing them that further documents have been received.

Issuing the Offer to restore letter (Annex 3 - Offer to Restore Letter)

28.21

Once the Restorations Manager has decided to allow restoration the A3 will need to issue the ‘offer to restore letter’.

  • The A3 should take an OPTICS print (PRI RES)

    This will show any fees due on this patent and will help in generating the offer letter. If any future fees are due use the Prose letter REST-11, if not use REST-12.

  • Generate the offer letter using PROSE: When drawing up the letter, an automatic calculator will appear on screen. The OPTICS PRI RES report will show the details of unpaid fees. The starting year will be the 1st unpaid payment year. Fill in the details and then OK it. Issue a copy of the letter to the applicant.
    PDAX ACTION:– Import the letter into PDAX

  • Diary the application for 2 months. The proprietor can apply for a two month extension so the A3 should issue a reminder letter (Annex 3b - Fee Reminder Letter) if no fees are received within the initial 2 month period. A diary should be made for two weeks after the expiry of this extended period.

  • If the fees are not paid within 4 months, the application should be refused. The A3 should minute the Restorations Manager to inform them that the fees have not been paid and a refusal decision (Annex 8 - Refusal Decision) needs to be issued.

  • Once the refusal decision has been prepared and authorised by the B3 the Restorations Manager will send a copy of the decision to the A3 who will issue it along with the letter (Annex 8a - Covering letter for refusal decision). The A3 will update OPTICS using REG RES – by entering the date of the Form 16, REFUSED, and the date of the decision. The A3 will then update the Exparte Post Grant SharePoint List and the case will be cleared.

Drafting an Order

28.22

When renewal payments arrive the A3 will receive a PDAX message and a minute from Renewals section.

28.23

Using Word the A3 will compile an Order, including the Head of Litigation’s electronic signature (Annex 6 - Order to Restore) allowing restoration. The A3 will ensure that any assignments or change of names are documented in the Order.

28.24

The A3 will issue a copy of the order to the applicant using the accompanying letter on PROSE – (REST 13). Make the relevant register entry (REC RES), clear the case records on the Exparte Post Grant SharePoint List and minute the file to Renewals Section for them to complete their actions.
PDAX ACTION:– Import a copy of the Order and send a message to RENEWALS section entitled PSM (date)

28.25

Once Renewals have completed their actions they will close the PDAX dossier down.

Further evidence received

28.26

On receipt of further evidence from the applicant, the A3 should redact any signatures or personal e-mail addresses and message the Restorations Manager entitled ‘New Docs’.

28.27

[Deleted]

28.28

[Deleted]

28.29

If further evidence is again required, the Restorations Manager will instruct the A3 to write again to the applicant. The A3 should diary the case for two months to await these documents.

28.30

If restoration is allowed on the basis of the new evidence filed, then follow the procedures in 28.16. If restoration is refused on the basis of the new evidence, a minded letter should be issued (see 28.17).

28.31

As mentioned in 28.17 the application may be refused. In each instance, the minded letter needs to be issued stating the reasons for refusal.

28.32

If no further evidence is filed or the evidence still does not satisfy the Restorations Manager that restoration is allowable, a preliminary view letter should be issued by the A3 (see Annex 7 - Preliminary View Letter). If a request for a Hearing is not filed in response to the preliminary view letter, a Refusal decision should be drafted and sent to the B3 for authorisation before being issued to the applicant by the A3 (see Annex 8 - Refusal Decision). A covering letter (see Annex 8a - Covering letter for refusal decision) giving the applicant details of how to file an appeal should accompany the decision. The A3 should update OPTICS using REG RES to record the refusal and clear the case by updating the Exparte Post Grant SharePoint List.
PDAX ACTION:– Import both letters and the Refusal decision into PDAX

28.33

If the applicant requests a hearing, the A3 should minute the Hearings Clerk who will make the necessary arrangements.
PDAX ACTION:– Create a minute and send a message to the Hearings Clerk entitled PSM (date)

28.34

Following the Hearing a decision will be issued by the Hearings Clerk. PDAX ACTION:– The Hearings Clerk will import a copy of the decision into PDAX

28.35

The B3 will update OPTICS with the decision of the Hearing Officer and return the file to the A3 for further processing.

28.36

If the application is allowed the A3 should issue the offer to restore letter (see 28.21).

28.37

If the restoration is refused the Restorations Manager should update OPTICS using (REG RES) – Register Restoration Decision – by entering the filing date of the Form 16, REFUSED (upper case used) and today’s date. The A3 should then clear the case by updating the Exparte Post Grant SharePoint List.

28.38

[Deleted]

28.39

[Deleted]

Withdrawal of the application for Restoration

28.40

Withdrawal can occur at any point in the restoration process, but can only be instigated by the applicant or their agent.

28.41

When a request to withdraw is received an official letter should be sent to the applicant by the A3 confirming the application has been withdrawn (see Annex 9 - Withdrawal Letter).
PDAX ACTION:– Import the letter into PDAX

28.42

The date of withdrawal is the filing date of the applicant’s/agent’s correspondence.

28.43

The A3 will update OPTICS using (REG RES) – Register Restoration Decision – by entering the date of the Form 16, WITHDRAWN (using upper case), and the date which is the filing date of applicants/agents letter.

28.44

[Deleted]

28.45

[Deleted]

28.46

The A3 can now clear the case by updating the Exparte Post Grant SharePoint List.

Refunds

28.47

The A3 will follow standard procedures when issuing refunds on applications for restoration.

28.48

[Deleted]

28.49

[Deleted]

28.50

[Deleted]

28.51

[Deleted]

28.52

[Deleted]

Request for confidentiality of documents

28.53

Under rule 53 of the Patents Rules 2007, a request may be made to treat documents as confidential. This request must be made within 14 days of the document being filed.

28.54

[Deleted]

PDAX ACTION:– Ensure that all confidential documents that are scanned are set Not Open to Public Inspection and are annotated CONFIDENTIAL

28.55

On receipt of the request the Restorations Manager may be inclined to issue a holding reply. The Restorations Manager will then minute the file to the C2 with a recommendation concerning the request.
PDAX ACTION:- Create a minute in PDAX and generate relevant messages

28.56

Once a decision on the request has been taken by the C2, a minute will be placed on PDAX and sent to the Restorations Manager for action.
PDAX ACTION:– The C2 should create a minute in PDAX and send message entitled PSM (date) to the Restorations Manager

28.57

If the request is refused, the Restorations Manager will write to the applicant to inform them giving a period of one month for reply. The documents should be kept NOPI until this time period has elapsed. PDAX ACTION:– Import the letter and create a minute in PDAX and diary the application for one month.

28.58

If no reply is received from the applicant, then the documents should be moved to the open part of the file.
PDAX ACTION:– Ensure that each document status is changed to Open to Public Inspection and the annotations of CONFIDENTIAL are removed

28.59

If further information is filed by the applicant, then the Restorations Manager should send the application to the C2 for further consideration of the refusal.

28.60

Where the C2 is in agreement that the documents should be kept confidential the following actions should be taken:

  • Complete Documents
    Each document should be annotated:
    This document has been made confidential under Rule 53 of the Patents Rules 2007
    The public status of these documents MUST always be set to NO as they are not open to public inspection.
    Part Documents
    The original document should be duplicated.
    The original document should then be annotated and its public status set to NO as is the case with complete documents.
    The copy document with the relevant confidential extract deleted should be annotated:
    Part of the original document has been made confidential under Rule 53 of the Patents Rules 2007
    The copy document, with the confidential extract deleted, may be placed OPI.
    [PDAX ACTION – Import the copy document into PDAX and set its status as Open to Public Inspection. Annotate the document to say that part of the document has been made confidential]

  • a confirmatory letter should be issued by the Restorations Manager confirming that the request for confidentiality has been allowed.
    PDAX ACTION:– Import the letter into PDAX

Rule 107 Request to Re-instate the application

28.61

If the Office has made an error when informing the applicant of the deadline for paying their renewal fees, then they may apply for re-instatement rather than restoration of their patent.

28.62

The applicant should write outlining the error they believe the Office has made. The Restorations Manager should investigate the sequence of events leading to the ceasing of the patent.
PDAX ACTION:– Arrange for letter to be added to PDAX

28.63

Once we are satisfied that re-instatement is applicable, a PDJ entry should be made immediately to close the 3rd Party Window and the 3rd Party Terms letter (see Annex 10 - First Third Party Terms Letter) should be issued to the address for service. PDAX ACTION:– Import the letter into PDAX

28.64

Make an entry on OPTICS (REG ENT) stating that a request for re-instatement is being considered.

28.65

The A3 should update the Exparte Post Grant SharePoint List to show re-instatement has been agreed by the office and diary the application for two months to await a response to the 3rd Party Terms Letter.

28.66

If no response is received to this letter, a further letter will be issued (see Annex 11 - Third Party Terms Reminder Letter) allowing a month for reply but warning that reinstatement will be withdrawn if no response is made. The A3 will wait a further 2 weeks to allow the proprietor to comply or request a hearing. If no response is received the A3 will update OPTICS and produce an advert for the PDJ to show the reinstatement has been withdrawn.
PDAX ACTION:– Ensure all letters are imported into PDAX

28.67

On receipt of a reply to the 3rd Party Terms letter, the Restorations Manager will check that acceptance is unequivocal. The A3 should check the minute from Renewals to ensure the correct fees have been paid.
PDAX ACTION:– Ensure that the letter is scanned into PDAX

28.68

The Restorations Manager should prepare the second 3rd Party terms letter (see Annex 12 - Second Third Party Terms Letter) to confirm the proprietor’s agreement to the re-instatement of the patent. If there are monies outstanding edit the letter to include a reply date of 2 months in which to file these fees.
PDAX ACTION:– Import the letter into PDAX

28.69

Once all the outstanding fees have been paid, the Restorations Manager should make a free text entry on OPTICS (REG ENT) to update the register stating that a request for re-instatement has been allowed. An email should also be sent to Publishing containing details of the PDJ entry to be placed in the next available journal.
PDAX ACTION:- Minute Renewals section to update Optics and issue renewal certificate

28.70

[Deleted]

28.71

The Restorations Manager should ensure that the patent is placed back ‘in force’ on OPTICS. Use the CHA CAS function, choose number 2 ‘bibliographic and register info’ and then option 3 ‘status information’. The Restorations Manager will then delete the information out of the ‘reason not in force’ and the ‘date not in force’ boxes and press return. The patent will then be back in force.

28.72

[Deleted]