Overview

The High Court has refused to restore a patent that had lapsed following the proprietor’s failure to pay the renewal fee within the requisite time period due to financial difficulties.

To remain in effect, a patent must be renewed on each anniversary of the filing date. For UK patents, the requirement to pay a renewal fee starts on the fourth anniversary of the filing date. If the deadline for payment of the renewal fee is missed, the proprietor has up to six months within which to pay the renewal fee, together with a late payment fee. If the renewal fee is not paid within this six-month period, the patent will lapse.

However, the proprietor then has a further 13 months within which to apply for the patent to be restored. The patent will be restored if the patent office is satisfied that the proprietor took reasonable care to see that any renewal fee was paid within the prescribed period.

In the case Betson Medical (Ireland) v Comptroller General of Patents, Mr Betson had filed his European patent application on 6 December 1996. In October 1999, the patent application was assigned to his company Betson Medical. The renewal fee in respect of the eighth year of the patent fell due on 6 December 2003. Mr Betson had a total of 17 patents in his portfolio due for renewal on this date (including the patent in question). The renewal fee was not paid by this date, nor within the six-month grace period (ending on 6 June 2004), and the patent therefore lapsed. Betson Medical applied for restoration of the patent.

The evidence showed that Mr Betson was aware of the date for payment of the renewal fee, but was unable to do so because of a shortage of funds. At the time, Mr Betson had been dependant on financial support from personal contacts to meet his day-to-day living expenses, such as utility bills. Neither Mr Betson nor Betson Medical had any funds with which to pay the renewal fees.

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