Quote from Martin Schweiger on August 22, 2022, 9:16 am

Yes, restoration is possible if the grace period of six months for attending to the missed renewal fee from the date of expiration has been missed. If the renewal fee is not paid by the end of this grace period, the patent cannot be renewed without formal restoration proceedings.

The problem with the restoration of a lapsed patent is that it is entirely at the discretion of the Registrar whether or not that restoration will be allowed.

The Registrar must be satisfied that the failure of the owner in paying the renewal fee on time is “unintentional”. This is difficult to prove with logical certainty.

It is further required that the grounds for the restoration application are set out and that supporting evidence is submitted along with the application. A mere assertion that the failure to pay the renewal fee was unintentional is not sufficient. As restoration is a serious administrative procedure and there are potentially far-reaching consequences. That means that evidence will need to be produced to convince the Registrar that the failure was indeed unintentional. "Unintentional" is not the contrary of "intentional": it goes without saying that where an owner has decided to allow a patent to lapse and subsequently there is a change of mind, restoration is likely not to be allowed by the Registrar. It is rather necessary to show that the owner actually intended to pay the renewal fees and that the circumstances surrounding the matter are explained.

If there was no intention to pay the renewal fees at all then the fact the the renewal fees have not been paid cannot be "unintentional".

In other words: submit evidence that client has made provisions to pay the renewal fees, but for reasons that are beyond your control, they have not been paid.

Section 28.9. of the UK Manual of Patent Practice gives more guidance on the meaning of "unintentional" https://www.gov.uk/guidance/manual-of-patent-practice-mopp/section-28-restoration-o-lapsed-patents

Meaning of unintentional

28.09

As with the more stringent standard of “reasonable care” see 28.10 to 28.16, there is no definition in the Act or rules as to what is meant by “unintentional” as it applies for determining whether to allow a request for restoration. In Sirna Therapeutics Inc’s Application [2006] RPC 12, which related to a request to make a late declaration of priority under section 5(2B), the hearing officer observed that the requirement to show an intention to file an application in time differed from the test of “continual underlying intention to proceed” that was applied in Heatex Group Ltd’s Application ([1995] RPC 546) in deciding whether to exercise discretion favourably to allow a period of time to be extended under rule 108 see 123.37. However, case law under rule 108 may be of relevance in analysing the evidence to establish the applicant’s intentions. In Anning’s Application (BL O/374/06), which related to a request for reinstatement under section 20A, the hearing officer took a similar approach and warned against the danger of going beyond the clear meaning of the statute. He interpreted “unintentional” according to its normal English meaning. In this case the hearing officer held that although there was a continual underlying intention to proceed it did not follow that the failure to reply to an examination report was unintentional.

28.9.1

Sirna Therapeutics Inc’s Application [2006] RPC 12 and Anning’s Application (BL O/374/06) established that the “continual underlying intention” test in Heatex is not applicable in determining the meaning of the word “unintentional” (in section 5(2B) or section 20A and it follows, in section 28(3) either).

28.9.2

In Matsushita Electric Industrial Co. v Comptroller General of Patents [2008] EWHC 2071 (Pat), [2008] RPC 35, Mr. Justice Mann gave some guidance on the level of evidential burden required to “satisfy” the Comptroller that the failure in section 28(3) was “unintentional”. The applicant in that case chose not to file any evidence beyond a bald assertion of the statute that the failure to pay the renewal fee on time was unintentional. It argued that that was all the statute required to satisfy the comptroller. It was held by the Judge that a mere assertion that the failure to pay the renewal fee was unintentional is not sufficient to enable the Comptroller to determine that the requirements of s.28(3) are fulfilled. He said :

the Act requires a judgment to be formed by the Comptroller so that he can be satisfied of the relevant matters. A judgment usually has to be made on the basis of evidence… The evidence required in any particular case where satisfaction is required depends on the nature of the enquiry and the nature and purpose of the decision to be made… A significant matter requires significant proof. I repeat, the Act does not require a statement that the failure to pay fees was unintentional. It requires the Comptroller to be satisfied of that fact.

28.9.3

It is clear from this judgment that while there is no universal rule as to what level of evidence has to be provided to satisfy the comptroller of the unintentional lapse in section 28(3) (and by implication in sections 5(2B) and 20A), some evidence above and beyond a bald assertion of the law is required.