Section 25: Term of patent
Sections (25.01 - 25.15) last updated: April 2015.
This section specifies when a patent begins to have effect, how long it may continue in force, and what must be done to keep it in force. Further requirements concerning renewals are set out in rr.36 to 39 and 41. The ection applies to both patents granted under the 1977 Act and European patents (UK).
|A patent granted under this Act shall be treated for the purposes of the following provisions of this Act as having been granted, and shall take effect, on the date on which notice of its grant is published in the journal and, subject to subsection (3) below, shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.|
s.77(1) is also relevant.
Thus the effective date of grant for the purposes of all provisions of the Act subsequent to s.25(1) is the date on which the specification of the patent was published and the notice of grant appeared in the Journal (or, in the case of a European patent (UK), the grant was mentioned in the Bulletin).
This date is later than the date on which a patent was granted see 18.86, 24.01, and which is the date effective for all provisions of the Act prior to s.25(1). This was confirmed by the Hearing Officer in ITT Industries Inc’s Application  RPC 23 (see especially page 27 line 20 onwards). There is thus an interval of several weeks during which the provisions relating to an application have ceased to apply but those relating to a granted patent do not yet have effect. For example, since s.19 is a provision prior to s.25(1), an application cannot be amended once a patent has been granted, but the specification of the patent cannot be amended until after publication of the notice of grant, because s.27 is a provision subsequent to s.25(1). Similarly, if a question of entitlement is referred to the Comptroller between the date on which the grant letter is issued and the date of publication of the notice of grant, then no immediate action can take place under either of sections 8 or 37. Instead, the question is treated as having been referred under s.37 on the latter date – see 8.03.1.
s.130(1) is also relevant.
The twenty-year term of the patent is measured from the date of filing. In the case of a patent granted in pursuance of a UK application, this is the date accorded under s.15. In the case of a European patent (UK) or a patent granted on an international application, the date of filing is that accorded under a.80 EPC or a.11 PCT respectively.
A notice in the Journal dated 22 July 1992 makes clear that from the date of that notice patent expiry dates recorded on the Register, announced in the Journal and recorded in official renewal information, would be based on the interpretation of relevant provisions of the legislation that the full term expires on the day before the anniversary of the filing date of the application; and that this change in procedure applies only to the expiry of a patent and not to the lapsing of a patent due to non-payment of a renewal fee. Thus a 20 year period that starts on 4 November 1992 ends on 3 November 2012.
Although the term of a patent may not be extended beyond the prescribed 20 year period, a medicinal product or plant protection product protected by a patent may be protected for a further period of up to five years from the expiry of the patent at the end of the twenty year term by the grant of a supplementary protection certificate (see supplementary protection certificate pages.
|A rule prescribing any such other date under this section shall not be made unless a draft of the rule has been laid before, and approved by resolution of, each House of Parliament.|
Hence although s.25(1) authorises the making of a rule prescribing that the term of a patent be measured from a date other than the filing date, any such rule must be made by affirmative resolution. No such resolution has so far been made.
|Where any renewal fee in respect of a patent is not paid by the end of the period prescribed for payment (the “prescribed period”) the patent shall cease to have effect at the end of such day, in the final month of that period, as may be prescribed.|
r.37(2), r.38(2) is also relevant.
If it is desired to keep a patent in force after the end of the fourth year from the date of filing, renewal fees must be paid for each succeeding year (but see 25.08). Successively increasing amounts are prescribed for each year after the fourth, and the fee for each year should normally be paid within the period of three calendar months ending on the last day of the month in which the renewal date falls. For example, if a patent is filed on 10 May 2003 and granted on 17 June 2006, renewal fees are due on 31 May each year, starting in 2007, and can be paid any time in March, April or May of each year (but see 25.07, 25.08).
r.37(3) is also relevant.
If, in the case of a patent granted under the Act, the notice of grant has not been published in the Journal by the end of three years and nine months from the date of filing, then any renewal fees which have become due (including any fees due in respect of preceding years) can be paid at any time up to the end of the third calendar month after the month in which the date of grant falls. For example, if a patent is filed on 20 April 2002 and granted on 16 November 2006, the renewal fee which would have been due for payment on 30 April 2006 may be paid any time up until 28 February 2007. The fifth anniversary falls on 20 April 2007, so the renewal fee for the following year would be due on 30 April 2007 and may be paid any time in February, March or April of that year.
r.37(4) a.86 EPC is also relevant.
Renewal fees to keep a European patent (UK) in force beyond four years from its date of filing are payable to the Office only in respect of each year following the year in which mention of the grant was published in the Bulletin. (Fees in respect of years up to and including the year in which mention of grant is published are paid direct to the EPO). Where a renewal fee becomes due within three months after publication of the mention of grant, it may be paid up to the end of the third calendar month after the month in which the date of grant falls. If the comptroller is not notified of an address for service for the proprietor of a European patent (UK), then the proprietor’s address on the register will be treated as the address for service even if that address is outside the United Kingdom see also 77.05.
a.112a EPC, s.77(5A), r.41A is also relevant.
Where a European patent (UK) has been revoked by the EPO Board of Appeal and is subsequently restored by the Enlarged Board of Appeal following a petition for review under EPC Art.112a, any renewal fees which fell due whilst the patent was revoked are payable within a two-month period following the restoration. See 77.12.1 for further details.
r.36(3), r.36(5) is also relevant.
In addition to the renewal fee, Form 12 must also be filed within the same period (preferably at the same time). A certificate of payment will be issued once the fee is received and/or a report detailing errors if the payment is incorrect. Details of the renewal arrangements effective from 1 November 1999 were published in a supplement to the Patents and Designs Journal of 20 October 1999.
The amount of the fee due is that which is prescribed at the time payment is made (but see 25.14). As a consequence of the stipulation that the fee be paid within the period of three calendar months ending on the last day of the month in which the anniversary of filing falls, it is not possible to circumvent an increase in the prescribed fees by earlier payment.
Anyone may pay the renewal fees on a patent - there is no requirement that this be done either by the proprietor or with his agreement.
|If during the period ending with the sixth month after the month in which the prescribed period ends the renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes of this Act as if it had never expired, and accordingly
(a) anything done under or in relation to it during that further period shall be valid
(b) an act which would constitute an infringement of it if it had not expired shall constitute such an infringement; and
(c) an act which would constitute the use of the patented invention for the services of the Crown if the patent had not expired shall constitute that use.
|Rules shall include provision requiring the comptroller to notify the registered proprietor of a patent that a renewal fee has not been received from him in the Patent Office before the end of the prescribed period and before the framing of the notification.|
r.39(2), r.39(3), r.39(4) is also relevant.
Within six weeks after the end of the period allowed for paying a renewal fee see 25.06-25.08 the comptroller must, if the fee is still unpaid, send to the proprietor a notice reminding him that payment is overdue and of the consequences of non-payment (except the timescales are different where fees are payable under s.77(5A) - see 25.12.1 below. This notice is sent to the address specified on the last Form 12 filed or any address notified by the proprietor subsequently for this purpose or, if no such address was given, to the address for service which is entered in the register.
r.39(2) is also relevant.
In the situation where a European patent (UK) has been revoked by the EPO Board of Appeal and is subsequently restored by the Enlarged Board of Appeal, and renewal fees are payable under s.77(5A), the comptroller must send such a notice within six weeks of either (i) the end of the renewal period or (ii) the date on which the Office receives notification from the EPO of the restoration of the patent, whichever occurs later. s.25(4) 25.13 The period allowed for payment of a renewal fee (see 25.06-25.08) may be extended by up to six months on payment of the fee appropriate for the length of extension sought and completion of the appropriate part of Form 12. If the renewal fee is paid within this extended period, the patent is treated as though it had not expired (but see ss.58(5) and 62(2)). If however the renewal fee is not paid by the end of six months from the time when it was due, the patent is regarded as having expired on the anniversary of the filing date, and is so advertised in the Journal. For example, if a patent is filed on 10 May 2003 and granted on 17 June 2006, renewal fees are due on 31 May each year, starting in 2007, but may be paid late any time up to the end of November (with a late payment penalty). If a fee is not paid for any given year, the patent will be deemed to cease on 10 May of that year. The Register is endorsed “Patent ceased”.
r.36(2) is also relevant.
If outstanding renewal fees due under s.77(5A) are not paid within either the r.41A two-month period for paying the renewal fee following the restoration or the six-month extension discussed above, the European patent (UK) will be deemed to have ceased at the end of the final day of the two-month period following the restoration by the Enlarged Board of Appeal.
When the renewal fee is paid in the extended period, the amount due is that which was prescribed at the end of the normal period. The amount of the fee for the extension is however that due at the time it is paid.
r.41(2), r.41(3) is also relevant.
If the renewal fee has not been paid (together with the fee for any extension) within six months of the end of the normal period allowed, then within a further six weeks the comptroller must send to the proprietor a further notice informing him that the patent has now lapsed and informing him of the possibility of applying for restoration (see s.28). This notice must be sent to the address specified by rule 39(3) (see 25.12).