Renewal Fees

1A patent can be kept active only on the payment of the renewal fees paid annually as prescribed in the First Schedule. The Patents Act provides for a fee structure which increases every year and provides for a time-limit for paying the fee. The above conditions on the payment of renewal fees are imposed to discourage the filing and maintenance of frivolous patents. The renewal fee shall fall due every year on the day mentioned in the Form of Patent granted to the patentee. To maintain a patent, the renewal fees has to be paid at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted before the due date. (Patents Rules 2003, r 80(1).) The renewal fees shall be remitted to the Patent Office by quoting the number and date of the concerned patent and with the year in respect of which the fees is paid. (Ibid, r 80(2).) The renewal fees in respect of a period of two years or more may also be paid in advance. Upon the receipt of the renewal fees, the Controller shall enter in the register of patents the fact of payment and issue a certificate to that effect. (Ibid, r 93.) An omission on the part of the Patent Office to record the payment of renewal fees and the consequent recording in the register that the patent has ceased to have effect can be remedied by rectifying the register. (Ibid, r 80(4).) Such an error will not require the patent to be reinstated as the same can be rectified under s 71 of the Patents Act. (See Eveready Battery Co Inc's Patent (2000) RPC 852, where the register was rectified after the Patent Office had wrongly recorded that the patent had ceased to have effect due to non-payment of renewal fees.)

2The patent shall cease to have effect on the expiration of the period prescribed for the payment of any renewal fees, if the said fee is not paid within the prescribed period or with such extended period as may be prescribed. (Patents Act 1970, s 53(2).) The time for the payment of renewal fees may be extended by not more than six months if a request for extension of time is made in Form 4 by paying the stipulated fees. (Patents Rules 2003, r 80(1A).) Though s 142 of the Patents Act deals with the general provisions on the payment of fees with regard to grant of patents, the Act provides for special provisions for the payment of renewal fees. (Patents Act 1970, s 53(2); Patents Rules 2003, r 80.) Similarly, r 138 of the Patents Rules provides for a general period of extension of time by one month, but the provision of extension of time under r 80(1A), which is specifically excluded in r 138, provides for a longer six-month extension period. The discretionary power of the Controller to correct irregularity in procedure cannot override the express prohibition of extension of time. (See Energy Conversion Devices Incorporated's Application [1982] FSR 544, (1983) RPC 231 (HL).)

3The non-payment of renewal fee or the expiry of the term of the patent shall result in the cessation of patent right. During the cessation, the subject matter covered by the said patent shall not be entitled to any protection. (Patents Act 1970, s 53(4).)