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September 2011 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

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An unfortunate mistake with a date cost a patent holder its patent in Denmark.

Patent holders must pay an annual fee to the Danish Patent and Trademark Office; otherwise they will lose their patent. If the non-payment is due to excusable circumstances, the patent may be restored, but the patent holder must then pay a restoration fee on top of the annual fee. The fees are payable within 2 months after the cessation of excusable circumstances.
A US patent holder had to pay the annual fee on 25 March 2007. But the patent holder had mistakenly noted that the fee was payable one year later, on 25 March 2008.
When the fee was not paid, the patent lapsed. The Danish Patent and Trademark Office notified the patent holder’s payment provider, and the payment provider wrote the patent holder on 5 April 2008 that the patent had lapsed. That got the patent holder’s attention.
The patent holder then asked the payment provider for help. The payment provider therefore sent a request to the Danish Patent and Trademark Office to restore the patent. The request was sent on 4 June 2008 – the day before the expiry of the 2 months’ time limit.
The Danish Patent and Trademark Office refused the request because the payment provider had forgotten to pay the annual fee.
Going to court
The Danish Patent and Trademark Office noted that under s 72 of the Danish Patents Act, the restoration fee as well as the annual fee are payable within 2 months.
In its defence, the patent holder argued that the Danish Patent and Trademark Office had told the payment provider that only the restoration fee was payable at that point. But the relevant employee at the payment provider was unable to recall whom he had spoken with, and nor had he prepared a telephone memo.
The Copenhagen Maritime and Commercial Court did not buy the employee’s statement. It was the patent holder’s own fault that he had failed to properly check the rules about restoration. Noting that the wording of s 72 of the Danish Patents Act was quite clear, the Court ruled in favour of the Danish Patent and Trademark Office.
The Court did not agree that the Danish Patent and Trademark Office had failed to comply with its duty to provide guidance by not informing the payment provider or the patent holder about the fee rules when receiving the request for restoration the day before the time limit expired.
Norrbom Vinding notes:
  • that the case illustrates the importance for patent holders of complying with the various time limits for payment of fees etc. to patent issuing authorities; and

  • that the case also stresses the importance of reacting promptly if such time limits are not complied with.
The above does not constitute legal advice and should not be relied upon as such

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