ICO This decision concerned whether the patent in suit should be restored following a failure to pay the renewal fee. In December 2000 and January 2001respectively two patent applications were filed for the same invention – a British (GB) application and a European (EP) application, the latter designating amongst other countries, GB and claiming priority from the British application. In November 2004 it became apparent that the British application would be accepted, so in order to remove a ‘double patenting’ situation (s.2(3) of the Act) the applicant’s representatives (‘B’) sent a letter to the European Patent Office (EPO) requesting that the designation of GB be removed from the EP application. This was B’s standard practice in these circumstances and their records were annotated accordingly. Unfortunately it transpired that these instructions were never carried out at the EPO for reasons unknown and this was only discovered by B after the final date by which the application in suit could be restored and by which time the GB patent was under s.73 (2) revocation action for duplicating the by now granted EP (UK).
The evidence showed and B admitted that through their intended policy of removing the GB designation from the EP, it was never their intention to pay the renewal fee on the application in suit. However, B argued that the policy to remove the GB designation from the EP was their decision and not one the applicant was aware of. B argued that s.28 (3) requires the comptroller to be satisfied that it is the failure of the proprietor of the patent to pay the renewal fee on time which is unintentional. B produced evidence to show that the proprietor (the applicant for restoration) was under the misunderstanding that he could have both the EP (UK) and the GB patent and had given instructions in good time to B to renew both of these patents. This B argued showed the proprietor’s intention was indeed to renew inter alia the application in suit and as it is the proprietor’s intentions and not those of B that should count in determining the restoration application.
The HO agreed with this argument and found that the evidence proved the applicant’s failure was indeed unintentional. As such he allowed the application for restoration.
Judges:
Mr G J Rose’Meyer
Citations:
[2009] UKIntelP o30209, EP (UK) 1215473
Links:
Statutes:
Intellectual Property
Updated: 21 October 2022; Ref: scu.457472
