For the whole decision click here: o26505
Summary
The applicant sought to rescind grant of the patent on the grounds that there had been an irregularity in procedure (i) by reason of the grant having been made when a divisional application was foreshadowed and (ii) by reason of an inconsistency between the description and claims. On (i) the hearing officer found that the wording of the applicants response to the first examination report objecting to plurality of invention did not foreshadow a divisional, but gave the benefit of the doubt to the applicant on whether there was an irregularity by reason of the examiner not issuing a warning letter when the application was found to be in order 'following' amendment to meet the plurality objection (see paragraph 15.46, Manual of Patent Practice). On (ii) the hearing officer considered the inconsistency to be a minor oversight not amounting to an irregularity.
On whether discretion should be exercised, the applicant argued in favour of a liberal approach by reason of precedent cases on Office practice in comparable situations, articles and case-law on human rights and administrative law suggesting a test of proportionality, and recent legislation favouring unintentional failure rather than due care as the criterion justifying reinstatement of an application. The hearing officer did not accept this that this justified rescinding grant, since a divisional application was not 'clearly foreshadowed' (see paragraph 18.89, Manual of Patent Practice), and although the Manual did not set forth a closed list of circumstances justifying rescission, the particular circumstances in which the filing of divisional applications came to be overlooked militated against the applicant.