Abandonment

Time frames for certain causes of patent application abandonment are about to change:

Cause for abandonment Current state Under the new Rules
Failure to pay the maintenance fee on time. Abandoned immediately. Abandoned on the later of 2 months from the date of a notice requiring payment or 6 months from the original maintenance fee due date.
Failure to request examination and pay the prescribed fee on time. Abandoned if examination request not made before the expiry of 5 years after the filing date. Abandoned at the end of 2 months after the date of the notice which will be sent after a 4-year time limit to request examination.
Failure to pay the final fee on time. Abandoned if the applicant does not pay within 6 months of the date of the notice. Abandoned if the applicant does not pay within 4 months of the date of the notice.

Reinstatement and due care

Under the current Patent Rules (the “Rules”), an applicant must request the reinstatement of an abandoned application within 12 months of the abandonment and pay the reinstatement fee in order to reinstate its application. The current Rules also provide that if an applicant does not pay the maintenance fee for an issued patent on or before the filing anniversary date, the patent is considered “about-to-lapse” and will be considered lapsed if the maintenance fee and late fee are not paid within one year of the anniversary date.

Under the new Rules, applicants will have to demonstrate due care in three specific instances in order to reinstate an application: 1) that was deemed abandoned for the failure to pay the maintenance fee on time; 2) for an application deemed abandoned for failing to request examination on time, and 3) for reinstating patents deemed expired for failure to pay a maintenance fee on time. The applicant will be required to provide reasons for the failure to take action and describe the circumstances that the applicant/patentee was faced with which led to the failure that resulted in abandonment or deemed expiry.

Reinstatement requests are therefore about to get more strenuous. Patent filers who are currently using deliberate abandonment and reinstatement of an application as a delay strategy in the prosecution of their patent applications are at risk of losing their patent rights. Patentees and filers should therefore consult a PCK IP professional to establish the best possible strategy in order to protect their patent rights. For more information, please contact Stephen Perry.

Click here to obtain more general information on the new Rules expected to come into force later in 2019.