Patent decision

BL number

O/028/09

Concerning rights in

Patent number GB 2 397 034

Hearing Officer

Dr J E Porter

Decision date

30 January 2009

Person(s) or Company(s) involved

Weatherford / Lamb Incorporated

Provisions discussed

Patents Act 1977 section 15(9) Patents Rules 2007 rules 19, 107

Keywords

Divisional application, Rectification of irregularities, Third party terms

Related Decisions

None

Summary

The applicant had stated a clear intention to file a divisional application, and had asked to be given at least one month’s notice before the application in suit was granted. The Office did not respond to this request and granted the patent soon afterwards. Over two years later, the attorneys for the applicant contacted the Office to seek a divisional filing. The hearing officer took the view that the Office’s failure to respond to the applicant before granting the patent was an omission, and so rule 107 applied. Following Howmet, he found on the balance of probabilities that the Office’s omission led to the applicant’s failure to file the intended divisional application, and that in the circumstances of the case there were no good reasons why discretion under rule 107 should not be exercised favourably. Rule 107 could be used to rescind the patent, extend the necessary time periods, and so allow a divisional application to be filed. However, he found it appropriate, as a condition of exercising this discretion, to impose third party terms in respect of any matter protected by a divisional application.