Patent decision

BL number

O/204/06

Hearing Officer

Mr G J Rose'Meyer

Decision date

21 July 2006

Person(s) or Company(s) involved

Bruker SA

Provisions discussed

PA 1977 Section 28(3)

Keywords

Restoration

Related Decisions

None

Summary

In early January 2002, Bruker SA assigned the patent in suit to Hightechcare SA. The patent was to be paid for in instalments ending on 31st December 2003, so Bruker insisted on keeping the files until that date. The assignment contained no arrangements as to who should renew the patent in the period until the payments were completed. This led to confusion, as Bruker assumed Hightechcare would see to renewal and vice versa. Hightechcare was a small business effectively run at the time by Monsieur Phelip, a former employee of Bruker, who was aware of the fact that Bruker had a well established and well run Patent Department. For the 10th year renewal at issue, the official UK Patent Office reminder letter (PREN 5 EP) was sent by their French Patent Attorneys to Bruker. Normally these would be forwarded to the Patent Dept. for renewal, but on this occasion they were intercepted by M. Bazille, CEO at Bruker. He was aware of the assignment to Hightechcare and forwarded the PREN 5 EP to M. Phelip with no further explanation, believing Hightechcare would pay the renewal fees. M. Phelip could not read English, but believing Bruker was to pay the fees, assumed this was merely confirmation of the renewal. The Hearing Officer (HO) accepted that although it was Hightechcare’s responsibility to find out the true position regarding renewals, they were also entitled to rely of the PREN 5 EP reminders being only a small business. If Bruker had not circumvented their normal internal arrangements by intercepting the reminders, M. Phelip would have been notified of the need to renew by the Bruker Patent Dept. and would have paid the fees. He had been deprived of the opportunity to correct his mistaken assumption that Bruker would pay. The HO also found that the 8th year renewal on a co-assigned patent (EP0697600) had been paid by Bruker in the period they had retained the files after the assignment, perhaps adding to Hightechcare’s assumption that they would pay this renewal too. The restoration was allowed.