For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 24 July 2008

Comptroller not a mere rubber-stamp for patent restorations

Another decision that slipped by last week was the ruling of Mr Justice Mann (Patents Court, England and Wales) in Matsushita Electric Industrial Company Ltd and others v UK Intellectual Property Office, a decision that has so far only made the columns of the subscription-only LexisNexis Butterworths service.

Matsushita owned four patents for which no renewal fees were paid on the due date (9 December 2005). Those fees remained unpaid on 25 April 2006, the latest date of the extended statutory period for late payment. On 9 October 2006 -- 10 months after the original renewal date, Matsushita applied for restoration of the patents, invoking s.28(1) of the Patents Act 1977 ("Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the comptroller within the prescribed period... "). By s.28(3) of the same Act it is provided that

"If the Comptroller is satisfied that the failure of the proprietor of the patent

(a) to pay the renewal fee within the prescribed period; or

(b) to pay that fee and any prescribed additional fee within the period ending with the sixth month after the month in which the prescribed period ended,

was unintentional, the Comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee... ".
These applications for restoration were supported by a witness statement prepared by
Computer Patent Annuities (CPA), which asserted that the failure to pay the necessary renewal fees had been unintentional.

The Patent Office wrote to ask for further details of the reasons behind the non-payment, but CPA took the view that, for the purposes of s.28(3), a mere assertion to that effect was sufficient. Accordingly Matsushita was not obliged to provide any further information. Following more correspondence, the hearing officer wrote to Matsushita and asked that it put in further evidence, as requested, or its applications would be refused. Matsushita failed to do so and the hearing officer refused their applications. Matsushita appealed.

The issue arose as to whether the Comptroller-General of Patents (the comptroller) should be 'satisfied' that the failure to pay the renewal fees had been unintentional, as required by s 28(3) of the Act, if merely presented with a mere assertion to that effect and nothing more.

Mann J dismissed the appeal. Describing the restoration of a patent as a serious, significant act with proprietary effect, not a casual administrative step, he affirmed that s.28(3) required that the Comptroller should be satisfied that the failure to pay the renewal fee had been unintentional. The mere assertion that the failure to pay renewal fees was unintentional would not suffice. If it could, the Comptroller's role would be reduced to a purely clerical one. This was objectionable in principle and would amount to letting an applicant make such a decision and to decide as a matter of law what was necessary to prove that the non-payment was unintentional.

The IPKat doesn't blame Matsushita for persisting with a lost cause, since the patents in question were probably worth a great deal more than the cost of the initial ruling and subsequent appeal -- but, even aside from the matter of principle involved, he didn't feel that the wording of s.28 offered much hope. Merpel asks, if the sanctity of the continued existence of a patent is such an important thing, don't you think that the two-bites-of-the-cherry system of allowing both late renewals and post-lapse restorations sends out the wrong message to patent owners?

Restoration here, here and here
Custom rubber stamps here and here -- and bouncing letters here

5 comments:

Anonymous said...

Looking at the UK IPO page on decisions concerning restoration, it seems that Matsushita's were not the only cases refused on 1 February 2008. The site gives a slightly lopsided view on the restoration practice as patents which are restored do not have reported decisions made. You might be surprised to learn that it has been accepted that CPA's computer-generated notices sent to large companies are often in the adequate reminders and result in pattern proprietors being unable to form an intention to renew. In short, it's not a great idea to instruct the same company that was responsible for your failure to renew to deal with the restoration.

Anonymous said...

Why take the risk? If the Patent Office is asking for support for the sworn statement that the failure was unintentional, why not just provide that information? Rightly or wrongly, the failure to do so hints at the fact that the original statement may have been putting the issue too high or that there was some sensitivity in providing support for the assertion. That, however, makes little sense as if you look at the summary of the evidence in the decision of the Patent Office, you will see that statement actually goes a little further than merely asserting that the lapse was unintentional. It also provides some evidence of the proprietor’s intention and included a letter from the proprietor confirming that:

“It was always the proprietor, Matsushita Electric Industrial Company
Limited’s intention to keep these patents in force and the lapse was
unintentional.”

All the Patent Office has said is “OK, so you say it was unintentional but, to be satisfied as to that fact, we need to understand how what you claim was an unintended consequence occurred”. Possibilities include failure in communication, clerical error, computer error etc.

I take the point in the other comment about not using the same representative to deal with the restoration. It may not be the case here, but the possibility for a conflict is significant.

Anonymous said...

A statutory declaration to the effect that failure in renewing the patents was unintentional and by way of setting out the details of circumstances that led to the non-renewal should be acceptable.

Could anybody, please post the case on IPKat.

Anonymous said...

he two-bites-of-the-cherry system of allowing both late renewals and post-lapse restorations sends out the wrong message to patent owners?


No. The last and final bite could be particularly bitter, specially when patent owners are required to set out reasons. The "first bite" is kind of 'as of right"...you only need to pay for the extended time..

Anonymous said...

I disagree that a stat dec doing no more than reciting the fact that the deponent believes that the failure was inadvertent would be sufficient. That belief might be entirely honest, but consider all the affidavits and stat decs which are sworn every day and which depose to beliefs which are entirely wrong. The test is not whether the deponent considers the failure inadvertent, it is whether the Comptroller is satisfied that it was – in which case it is perfectly reasonable for the Comptroller to call for the submission of the evidence which should have been in the stat dec (i.e. what facts are you basing your statement of belief on please?).

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