Patent decision

BL number

O/009/08

Concerning rights in

GB 0608059.2 and GB 0608060.0

Hearing Officer

Mr B Micklewright

Decision date

14 January 2008

Person(s) or Company(s) involved

Investigen, Inc.

Provisions discussed

Patents Act 1977 sections 5, 89, 89A, 89B

Keywords

PCT application, Priority date

Related Decisions

[2005] UKIntelP o24005

Summary

Investigen filed two GB applications and made requests for permission to make a late declaration of priority on both applications. The hearing officer, following Abaco Machines (Australasia) Pty Ltd’s Application [2007] EWHC 347 (Pat), refused the request on the first of these applications, GB0608060.0, because the failure to file the application in suit (a GB application) was not unintentional. Investigen had instead intended to file a PCT application within the twelve month period rather than a GB application.

Investigen did in fact file a PCT application one day outside the twelve month period for claiming priority. The second of the GB applications was the national phase application stemming from this PCT application. The hearing officer found that the PCT application needed to enter the national phase before a request to make a late declaration of priority under section 5(2B) could be made. Such a request could not be made when the PCT application was in the international phase. He then found that the PCT application did not enter the national phase within the fourteen month time limit for making a request under section 5(2B). Certain forms including a Form NP1 were filed on that date but the requirements of section 89A(3)(b) for early entry to the national phase had not been satisfied. In particular no copy of the international application had been filed in the fourteen month period and there was no express request to enter the national phase early. Moreover the hearing officer decided that these irregularities could not be corrected using any provision of the Act or Rules. The hearing officer therefore refused the request to make a late declaration of priority on the second application, GB0608059.2.