Patent decision

BL number

O/027/08

Concerning rights in

GB2368740

Hearing Officer

Mr G J Rose'Meyer

Decision date

1 February 2008

Person(s) or Company(s) involved

Roke Manor Research Limited

Provisions discussed

PA Act 1977 Section 28(3)

Keywords

Restoration

Related Decisions

GB2288939, GB2322748, GB2322749, GB2322750, EP1054652

Summary

This patent was decided on exactly the same basis as the first applications for restoration to proceed to a hearing since the criteria for considering such applications changed. Those patents were in the name of Matsushita Electric Industrial Company Limited (GB2288939, GB2322748, GB2322749 and GB2322750). Section 28 of the Patents Act 1977 was amended by the Regulatory Reform (Patents) Order 2004 as from 1 January 2005. The amendment essentially means that a proprietor of a patent will now have to satisfy the comptroller that the failure to pay the renewal fee on time was “unintentional” instead of having to satisfy him that “reasonable care” had been exercised to see that the renewal fee was paid on time. The applicant’s central argument in all these cases was that the evidence supplied was clearly sufficient to fulfill the new requirements of s.28 (3). The applicant had essentially filed a witness statement stating that the failure to pay the fees on time had been “unintentional”. No other evidence was lodged. This, the applicant argued, adequately met the statutory requirement of s.28 (3) because there was a clear, unequivocal statement of the requirement of the law and filed in evidential format as prescribed by the rules. It followed, in the applicant’s submission, that this must satisfy the comptroller. The Hearing Officer disagreed.

The Hearing Officer decided that this approach in effect takes away the decision making role which he had earlier found s.28 (3) places upon the comptroller. It substitutes the applicant’s subjective assertion of compliance with the law, for what should be a statement of facts or surrounding circumstances which would enable the comptroller himself to arrive at a reasoned, objective determination. The determination of whether the comptroller is satisfied must be based on the facts of each case. The facts should come from the evidence which the applicant chooses to file. That evidence should be sufficient to enable the comptroller to come to the determination himself. In this case the evidence supplied had been insufficient to establish the facts so as to satisfy the comptroller that the failure to pay the renewal fee on time or within the grace period was unintentional. The application for restoration was therefore refused.