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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> Kenneth Edward Marshall (Patent) [2014] UKIntelP o24514 (3 June 2014) URL: http://www.bailii.org/uk/cases/UKIntelP/2014/o24514.html Cite as: [2014] UKIntelP o24514 |
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Summary
This decision concerns whether the period prescribed under rule 40(1) for filing an application to restore patent number EP(UK)1257495 can be extended under the provisions of rule107 (Correction of irregularities) or rule 111(Delays in communication services).
On 31 August 2012, the applicant filed an application for restoration. He notified the IPO that he had recently discovered that his patent had not been renewed since 2009, even though he had instructed and paid his patent attorneys to do so. The IPO wrote to the applicant notifying him that as his application for restoration had been paid outside the thirteen months prescribed under r.40(1) for applying for restoration, there was no way of restoring the patent as that period is not extendable. On 3 April 2013, a letter was received in the IPO from the attorneys representing the applicant saying they have written and phoned the IPO concerning the patent and asking for confirmation that the case was back on record. The IPO told the attorneys that it had no record of these communications and explained that as the application for restoration had been made too late, the only option left would appear to be to seek consideration under r.107 to show a procedural irregularity within the office to allow the period to be extended.
Evidence and submissions were filed which showed a set of quite extraordinary circumstances whereby the renewal documents said to have been filed by the attorneys in three consecutive years in 2010, 2011 and 2012 by fax and by post, were apparently never received in the IPO and therefore not acted upon. The matter came to a hearing at which the attorneys argued that either r.107 or r.111 ought to allow the extension of the r. 40(1) period due irregularities within the IPO or due wholly or mainly to a failure in communication services.
The HO found that certain official signposts which might have alerted the attorneys to the ceasing of the patent after the first years failure of renewal were not expected nor received in their offices, but that despite status checks of the patent during the subsequent two years, the attorneys did not note the ceased status of the patent and therefore still filed the 2011 and 2012 renewal applications. The HO found no evidence of any irregularity within the IPO and so the r.107 ground did not succeed. He also found that although a postal failure may have been a contributory factor, it was not the whole or the main reason for the failure to file the restoration application on time. As such the r.111 ground also did not succeed.
