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Monday, 14 January 2008

UK Restoration requirements, and why they were changed

A decision on restoration (BL O/357/07) has recently been issued by the UK Patent Office/UK-IPO, having a set of facts that patent attorneys (and particularly those setting examination papers) love to get their teeth into, as it is full of dates being missed and relevant laws changing at different times.

The decision was made with reference to a previous form of sections 25 and 28 of the Patents Act 1977 in force at the relevant time, around 2004-2005 when the law was being changed in various ways in an apparent attempt to make life a bit easier for the common patentee. Because the relevant renewal date of the patent in question was prior to commencement of the Regulatory Reform (Patents) Order 2004 (SI 2004 No. 2357), the previous ‘reasonable care’ test under section 28(3) was applied, rather than the less strict ‘unintentional’ test now applicable under the current form of s28(3), but only for patents ceasing to have effect on or after 1 January 2005 (see Regulation 23 of the Order). Expiry of the section 25(4) period (the extra 6 month period for paying a renewal fee) has also changed since the date relevant to the decision, by virtue of section 8 of the Patents Act 2004, as commenced by the Patents Act 2004 (Commencement No. 3 and Transitional Provisions) Order 2005 (SI 2005 No. 2471), in force as from 1 October 2005.

The renewal fee for the 13th year of the patent in question was due on 15 November 2004, but was not paid in time, and was still not paid by the end of the additional period allowed by section 25(4), resulting in the patent lapsing on 15 May 2005 (but ceasing to have effect as from the renewal date). An application for restoration was filed on 11 May 2006, within the 19 month period allowed for under rule 41(1)(a) of the Patents Rules 1995. A preliminary view was taken by the Patent Office that the requirements for restoration had not been met.

A director (M) of the claimant had been personally responsible for the payment of renewal fees, and had arranged for reminder letters to be sent to him from his patent attorneys. These had been sent in the normal course of events. M was consequently reminded in April 2005 of the end of the section 25(4) period for the patent in question. Because the patent was one of a group of corresponding European patents, the EP(UK) part had a final date of 15 May, earlier than that for the other four patents in Germany, France, Spain and Sweden, the periods for which all expired instead on the end of the month. M argued that because of various difficulties he was in at the time, a mistake had been made in not paying the EP(UK) part in due time, while the other patents were renewed in time.

It was argued that M had taken reasonable care to ensure that the renewal fee was paid, because the system in place had allowed renewal fees to be paid in time for previous years. M had thought he was being careful in renewing the patent in time, but had made a mistake that was understandable due to the form of reminder sent, which had specified different periods for each patent.

The Patent Office’s case was that reasonable care had not been shown. M had decided, as with previous years, to defer payment until the end of the extended renewal period and had either misread or misunderstood the clear reminder letter from his patent attorneys, with the result that he failed to realise that the final deadline for the EP(UK) patent differed from that of the other countries.

The hearing officer considered that M had not taken reasonable care. In taking a conscious decision in making late payments, M had been adopting a risky strategy. Relying on professional agents for reminders was perfectly reasonable, but M had not fully understood the differences in dates for the patents he was renewing, even though it was incumbent upon him to act on the reminders. The form of the reminder was clear, and M’s contention that the style of presentation was in some way to blame was rejected. M should have read and understood the reminder and its unambiguous contents, and would have acted upon it if he was taking reasonable care to renew the patent. On the facts presented, the hearing officer considered that M had not exercised reasonable care to see that the renewal fee was paid in time. The application for restoration was consequently refused.

The IPKat has a great deal of sympathy with the patentee in this case for a number of reasons but mainly because if the renewal fee deadline had fallen just a month and a half later, the new 'unintentional' test would have applied instead, and the application for restoration would almost certainly have been allowed. This case provides a good demonstration of why the law was changed, because the patentee clearly had every intention of keeping the patent in force, even though he seemed to be somewhat befuddled at the time. The unfortunate patentee was also not helped by the fact that the renewal fee deadlines were at the time out of sync with all the other countries in which he had patent protection. This has all now changed, now that renewal fee dates are due at the end of the month and the less strict unintentional test is applicable. This does not, unfortunately, help the poor patentee in this case.

Merpel, on the other hand, points out that she has much less sympathy with the patentee. Didn't he have several timely reminders and a total period of 9 months during which he could have paid the renewal fee? If he was so cash-strapped not to be able to afford to pay renewals on time, how much was his patent really worth, in its 13th year? Merpel thinks that this case is a good demonstration of why one should not play the risky game of leaving things to the last minute.

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