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Friday, 21 August 2009

Reinstatement of UK patent applications

The UK-IPO has this week issued a practice notice relating to reinstatement of patent applications, following Mr Justice Pumfrey's judgment in Anning's application [2007] EWHC 2770 (Pat). This attempts to clarify what happens if there has been a failure to meet a time limit, for example as given in an examination report. The substance of the notice goes as follows:

Where an application has been treated as refused at the end of the compliance period due to failure to respond to a substantive examination report, the application may be reinstated provided that the requirements of section 20A and rule 32 are met. Where reinstatement is allowed, the applicant shall be allowed a period of not less than two months to respond to the substantive examination report, since it is the failure to respond to the examination report which led to the application being treated as refused. However, this will not have the effect of extending the compliance period. Therefore, where an application is reinstated after the compliance period has ended, and the opportunity under rule 108 for extending that period has expired, amendment of the reinstated application will not be possible. The applicant will instead have the opportunity of providing arguments, within the two month period, to show that the application was in order at the end of the compliance period.

It follows that in any circumstances where an application is refused, or treated as having been refused or withdrawn, due to failure by the applicant to comply with a requirement of the Act or rules, reinstatement of the application will not have the effect of extending the compliance period.

This notice highlights the importance of putting the application in order before the end of the compliance period. The compliance period may be extended in two-month tranches under rule 108(2) or 108(3), by filing Form 52, the appropriate fee and evidence supporting the request for an extension, if rule 108(3) applies. Any request for such an extension must be filed within two months of expiry of the period.
The IPKat is unsure why it has taken the UK-IPO nearly two years to getting round to doing this. Does it tell us anything we didn't already know?

1 comment:

Anonymous said...

I don't know why it has taken nearly two years, but I must admit that, when this announcement was made, I couldn't make head nor tail of it at first. In case any other readers are lost, this is what I think it is on about.

Section 20A applies where a patent application dies as a result of the applicant unintentionally failing to do something within a time limit. It allows the Office to reinstate the application. On the face of it, Subsections (7) and (8) say that you get at least two months after the reinstatement to put right what went wrong. So you might think that, if you fail to respond to an exam report, and the application is then treated as being refused at the end of the compliance period, then getting the application reinstated gives you two months to amend it in.

This is not so. Getting the application reinstated does not extend the compliance period. So if you get your application reinstated after the compliance period has run out, then either (a) you have to argue that the application was actually in order before the time, ie that the last exam report was wrong in every objection (which I think you can do anyway without having to ask for reinstatement), or (b) you have to extend the compliance period - you can get two months just by paying for it but would need good reasons to get longer.

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