Re-establishment of rights
If a patent applicant or proprietor fails to take action within a certain time limit, it can lead to the loss of rights, which means that an application or a patent lapses. Such a situation can include unpaid renewal fees or missed deadlines for the validation of a European patent. The applicant can file a request to the Finnish Patent and Registration Office (PRH) for the re-establishment of the right if the requirements in the legislation are fulfilled (section 71a of the Finnish Patents Act).
Requirements for re-establishing a right
It is possible to re-establish the right if the patent applicant or proprietor has taken all due care required by the circumstances to observe the time limit, but has nonetheless missed the deadline. Lack of awareness of the applicable law or forgetting the deadline, for example, are not valid reasons for accepting the request.
The Patents Act does not lay down criteria for the assessment of due care and circumstances, which is why the PRH assesses all requests comprehensively and on a case-by-case basis.
Request must be filed by the deadline
The Act lays down two deadlines for submitting a request for the re-establishment of rights:
- The request or the missing actions must be carried out within two months of the patent proprietor or applicant becoming aware of the missed deadline.
- The absolute deadline for filing the request is one year after the expiration of the time limit. With respect to annual fees, the one-year deadline is counted from the end of the late annual fee payment period.
Both time limit requirements must be fulfilled in order for the PRH to process the request. This means that rights cannot be re-established more than one year after the deadline, even if the applicant was unaware of missing the deadline. Similarly, if the applicant becomes aware of having missed the deadline and does not take action within two months, the request will not be processed, even if less than one year has elapsed since the deadline.
With respect to requests concerning priority, the time limit is stricter: the request must be filed within two months of the deadline concerning priority.
How to file a request for the re-establishment of rights
The re-establishment of rights should be applied for in writing by submitting an informal request to the PRH. The request must be filed in either Finnish or Swedish. If the request is submitted by a representative, they must produce a power of attorney.
In addition to the request, the missing action must be taken. Taking the missing action may mean, for example, paying all the fees that were due when the request was filed or providing a translation.
The request must contain the following:
- The registration number or application number of the patent
- Information on when the patent proprietor or applicant became aware of having missed the deadline so that the PRH can assess whether the request was filed within the time limit
- An account of why no action was taken within the time limit
- An account of how the applicant took all due care required by the circumstances to observe the time limit.
The accounts can, for example, contain statements, internal reports or other similar content.
There is a fee for processing the request. In addition to any outstanding fees, a decision fee according to the PRH’s price list must be paid to the PRH. Check our price list to find the correct payment amount: ‘Decision fee under section 71a of the Finnish Patents Act’.
If the PRH rejects the request, the fees for the missing action are refunded to the person who has filed the request. The decision fee is not refunded.
Processing and decision-making
There are three possible outcomes:
- The request is not taken up for processing because the time limits stated in the requirements were not observed or an outstanding fee has not been paid
- The request is accepted
- The request is rejected.
If the requirements are fulfilled, and there are no impediments for accepting the request, the PRH will accept the request. In such a case, the missing action is considered to be taken within the time limit and the PRH reinstates the patent. Information on the decision will be published in the next Patent Gazette.
However, bear in mind that a third party may become entitled to exploit the invention through a right of exploitation under section 71c of the Finnish Patents Act during the time between the loss of your right and the announcement in the Patent Gazette.
If the requirements are not fulfilled or the request cannot be accepted for any other reason, the PRH will send a request for comments to the person who has filed the request. A time limit of two months will be set for submitting the comments.
After the comments have been processed, the PRH either accepts or rejects the request. Rejection decisions can be appealed at the Finnish Market Court.