CHAPTER V

Provisions as to Patents after Grant

36. —(1) A patent shall take effect on the date on which notice of its grant is published in the Journal and, subject to subsection (2), shall continue in force until the end of the period of twenty years beginning with the date of filing of the patent application.

(2) A patent shall lapse at the end of the period prescribed for payment of any renewal fee if the fee is not paid within that period or within that period as extended under this section.

(3) The period prescribed for payment of any renewal fee shall be extended by such period, not being a period of more than six months, as may be specified in a request made in that behalf by or on behalf of the proprietor of the patent to the Controller if the request is made and the prescribed additional fee paid before the expiration of the period of extension so specified.

(4) The Minister may by order alter the period for which a patent shall remain in force for the purpose of giving effect to a provision of any international treaty, convention or agreement relating to the term of protection of a patent to which the State is or proposes to become a party.

37. —(1) Where a patent has lapsed by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 36 (3), an application may be made to the Controller, within two years from the date on which the patent lapsed, for the restoration of the patent.

(2) An application under this section may be made by the person who was the proprietor of the patent or by his personal representative, and where the patent was held by two or more persons jointly, the application may, with the leave of the Controller, be made by one or more of them without joining the others.

(3) An application under this section shall contain a statement (to be verified in such manner as may be prescribed) fully setting out the circumstances which led to the failure to pay the renewal fee, and the Controller may require from the applicant such further evidence as he may think necessary.

(4) If the Controller is satisfied that the failure to pay the renewal fee was prima facie unintentional, that reasonable care had been taken to ensure payment of the fee within the prescribed period and that there has not been undue delay in the making of the application, he shall advertise the application in the Journal, and within the prescribed period any person may give notice to the Controller of opposition thereto.

(5) If notice of opposition is duly given under this section, the Controller shall notify the applicant and shall determine the question.

(6) If the Controller decides to allow an application under this section for restoration, he shall upon payment of any unpaid renewal fee and of such additional fee as may be prescribed, make a restoration order in accordance with the application.

(7) An order under this section for the restoration of a patent—

(a) may be made subject to such conditions as the Controller thinks fit, including in particular a condition requiring the entry in the register of any matter in respect of which the provisions of this Act as to entries in the register is not complied with; and

(b) shall be subject to such provisions as are prescribed for the protection of persons who, during the period beginning on the date on which the patent lapsed and ending on the date of the order under this section, may have begun to avail themselves of the invention which is the subject of the patent,

and if any condition to which an order under this section is subject is not complied with by the proprietor of the patent, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.

38. —(1) Subject to the following provisions of this section, the Controller may, on an application made in the prescribed manner by the proprietor of a patent, allow the specification of the patent to be amended, subject to such terms as to advertising the proposed amendment and such other conditions, if any, as he thinks fit; provided that no such amendment shall be allowed where there are pending before the Court or the Controller proceedings in which the validity of the patent has been or may be put in issue.

(2) In any proceedings before the Court or the Controller in which the validity of a patent is put in issue, the Court or, as may be appropriate, the Controller may, subject to the following provisions of this section, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the Court or the Controller thinks fit.

(3) An amendment of a specification under this section shall be invalid to the extent that it extends the subject matter disclosed in the application as filed or the protection conferred by the patent.

(4) An amendment of a specification under this section shall have effect and be deemed always to have had effect from the date of the grant of the patent.

(5) Where an application for leave to amend a specification has been advertised in accordance with subsection (1) or (2), any person may give within the prescribed period notice to the Court or the Controller, as may be appropriate, of his opposition to an amendment proposed by the proprietor of the patent, and if he does so shall notify the proprietor and the Court or the Controller shall consider the opposition in deciding whether the amendment, or any other amendment, should be allowed.

(6) Where an application for an order under this section is made to the Court, the applicant shall notify the Controller who shall be entitled to appear and be heard on the hearing of the application and shall so appear if so directed by the Court.

39. —(1) A proprietor of a patent may at any time by written notice given to the Controller offer to surrender his patent.

(2) Where an offer is made under this section, the Controller shall advertise the offer in the prescribed manner and any person interested may, within the prescribed period commencing on the date of the publication of the advertisement, give notice to the Controller of opposition to the proposed surrender.

(3) Where notice of opposition is duly given under this section the Controller shall notify the proprietor of the patent and determine the question.

(4) Subject to subsection (3), if the Controller is satisfied that a patent may properly be surrendered, he may accept the offer.

(5) As from the date when notice of acceptance is published in the Journal the patent shall cease to have effect but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date for the service of the State.