Patent decision

BL number

O/016/08

Concerning rights in

International application PCT/CA2003/01993

Hearing Officer

Dr J E Porter

Decision date

22 January 2008

Person(s) or Company(s) involved

Research In Motion Ltd

Provisions discussed

Patents Act 1977 sections 20A, 89A

Keywords

PCT application, Reinstatement

Related Decisions

None

Summary

The international application was filed with all national states designated, but due to a clerical error the EP regional phase was not designated. Unaware of this, the applicant pursued an EP regional application and did not take steps to enter the UK national phase at the relevant time. When the EPO noticed that the EP regional phase had not been designated, the EP regional application was deemed void. The applicant therefore applied to reinstate the international application for a patent (UK), which had been taken to be withdrawn for failure to enter the UK national phase.

The applicant argued that there had been no intention either to pursue or not pursue the application in the UK national phase. It had simply not been considered, because the EP regional route was pursued. Thus, they argued, reinstatement should be allowed because there had been no positive intention not to comply with the requirements for national phase entry. The applicant also argued that, had they been aware of the clerical error at the relevant time, they would have chosen to enter the UK national phase instead. The hearing officer found that the applicant had in fact made a decision to pursue the EP regional route and not the UK national route, and had therefore intentionally failed to comply with the UK national phase requirements. The failure to comply was not unintentional, and so reinstatement was not available. Furthermore, whether or not the applicant would have had different intentions, had the error been identified earlier, was not the matter to be decided, and so was not relevant to the decision which had to be made.