Patent decision

BL number

O/247/09

Concerning rights in

GB 0906471.8

Hearing Officer

Dr J E Porter

Decision date

1 September 2009

Person(s) or Company(s) involved

Irwin Industrial Tool Company

Provisions discussed

Patents Act 1977 sections 15(9), 117, 117B Patents Rules 2007 rules 107, 108, 109

Keywords

Correction, Divisional application, Extensions of time, Rectification of irregularities

Related Decisions

None

Summary

The applicant replied 2 days late to an examination report, and in the late reply requested the standard 2 month as-of-right extension to the reply period. The reply enclosed amendments which, in response to a plurality objection, removed two independent claims. Within the extended reply period, the application was granted. The applicant subsequently filed a further application claiming divisional status.

The applicant argued that the Office should have confirmed the extension request, should not have granted the application within the extended reply period, and should have regarded the applicant’s various actions as amounting to foreshadowing of a divisional application. Alternatively, they argued that there was doubt about the applicant’s intentions which the Office should have clarified before grant. Furthermore, they argued that the word “warning” in bold was missing from a relevant warning clause in the examination report, and so the comptroller should rescind grant of the parent application under rule 107 on the basis of one or more of these errors.

The Hearing Officer held that the applicant’s actions did not amount to foreshadowing of a divisional application, and that there was no error, default or omission in the way Office had processed the reply to the examination report. He held that the missing word “warning” in bold was an omission but, applying Howmet, refused to exercise discretion under rule 107 to rescind grant, finding on the evidence that inclusion of the word would have made no material difference to the applicant’s actions.

An alternative argument that section 117 could be used to correct the date of grant to the end of the extended reply period was also rejected.