IPO The application was initially filed by a Patent Attorney representing the applicant. However, soon after the application was filed, the applicant and the attorney parted company and Mr. Griffith continued prosecuting the application on his own. The application received a preliminary examination report which notified Mr. Griffith that an abstract needed to be filed by the 28th April 2008. No abstract was received in time so consequently the Office issued a letter to Mr. Griffith notifying him that the application had been terminated. Mr. Griffith requested reinstatement of the application and after examination of evidence filed by Mr. Griffith, the Office wrote to him explaining that the case for reinstatement had not been made out because he took the decision not to file the abstract in the clear knowledge that he had to do so, but because he felt the costs were getting excessive, he chose not to file it. This was a conscious decision and therefore not ‘unintentional’ as required by s. 20(A) of the Act. Mr. Griffith subsequently requested a hearing.
Mr Griffith’s argument was that it was never his intention to let his patent lapse. He had used professionals to file the application and had subsequently tried his best in difficult circumstances to prosecute the case himself. After discovering that the abstract had not been filed, he took professional advice from another agent, but he felt here that he had received poor advice and that the costs quoted were so high that it left him with no option but not to be able to file the abstract on time.
The HO found that although Mr. Griffith knew that an abstract had to be filed by a certain time, he felt he was unable to do so and was unaware of the specific date to file it. He also found that by the time Mr. Griffith sought the advice of the second agent on how to file the abstract, the date for doing so had already passed. As such he found that the decision not to file the abstract had been made outside the relevant period in which his intentions as required by the law had to be judged. In looking at Mr. Griffith’s intent within the relevant period, the HO found that Mr. Griffith clearly did not prosecute the application as carefully as he might have because of a range of external factors in his life. However the evidence showed that the failure to comply in filing his abstract on time came and went without any awareness of those events on Mr. Griffith’s part. He found that not to be a conscious decision and as such found the failure to be unintentional and allowed the application for reinstatement.
Citations:
[2009] UKIntelP o39409
Links:
Intellectual Property
Updated: 21 October 2022; Ref: scu.457557