Patent decision

BL number

O/223/06

Hearing Officer

Mr G J Rose'Meyer

Decision date

8 August 2006

Person(s) or Company(s) involved

William W Jeswine

Provisions discussed

PA 1977 Section 28(3)

Keywords

Restoration

Related Decisions

None

Summary

In 1995 Mr Jeswine sold certain rights in the patent to Eagle Premier ("Eagle") who were a holding company for emerging technology. In 1996/7, he entered into an agreement with Eagle in which, inter alia, they were responsible for payment of renewal fees, while he looked after the technical side. Much of the agreement was verbal and not formalised to save on costs. Mr. Jeswine employed Seed IP to send reminders to Eagle, but were only to pay the fees on specific instructions to do so from Eagle. A pattern of late response and payment by Eagle built up between them and Mr. Jeswine, often resulting in replies/payment on the final day. This sort of arrangement existed, but worked well enough for over five years and resulted in renewals of the patent at the EPO and once (in the 7th year) in the UK, where the fee was paid some two months late with surcharges. In the 8th year renewal in suit, Seed IP received no response from Eagle to their April 2003 reminder, so alerted Mr. Jeswine. He was not overly concerned at this stage, because of his previous experience of Eagle, but from May to September he sent letters by post to them in an attempt to prompt them, but with no response. He had no other contact details for Eagle. By late September he was concerned enough about the non-response from Eagle to ask Seed IP to send all correspondence to him directly. Mr. Jeswine continued to write to Eagle weekly until early December, but with no reply. Despite his growing concerns and other adverse indications, Mr. Jeswine took no action to pay the renewal fees himself, relying on his hope that Eagle would eventually pay. The HO accepted that Mr. Jeswine had put a reasonable renewal system in place, but that despite strong indications that it had broken down in this period, he chose to wait until after it had lapsed to take further action. This was not reasonable care in the circumstances and the application for restoration was refused.