Patent decision

BL number

O/185/10

Concerning rights in

GB0919324.4

Hearing Officer

Mr G J Rose'Meyer

Decision date

7 June 2010

Person(s) or Company(s) involved

Mr Adam Brooks Clifford

Provisions discussed

PA 1977, Section 20A, Section 89A(3) and Rule 66(1)(b)

Keywords

Reinstatement

Related Decisions

None

Summary

Application GB0919324.4 was filed on 4 November 2009 in the name of Adam Brooks Clifford. The application was filed under Section 89A (3) of the Act 1977, requesting entry to the UK national phase for international application PCT/GB2007/00470. The international application has an international filing date of 7 December 2007 and an earliest priority date of 7 December 2006. The prescribed period for entry to the UK national phase therefore expired on 7 July 2009.

A Form 52 requesting an extension to the prescribed time limit and evidence were also filed, but as the applicant had failed to comply with the requirements of Rule 66(1) (b) and the extension of time had not been filed in the time prescribed by Rule 108, the application was treated as withdrawn. The applicant was informed that reinstatement was the only option available if he wished to proceed. A Form 14 was duly filed by the applicant requesting reinstatement under s.20A and r.32.

The determination to be made under s.20A is that the Comptroller shall reinstate the application if he is “satisfied that the failure to comply [with s. 89A(3) in this case] …was unintentional”. The applicant’s case for reinstatement is based on arguments that through the severe stress he was under resulting from trying to finance his invention through the development stages and the unfamiliar patenting process, his state of mind was such that he believed the cost of entry into the UK national phase was much higher than it actually was. He did not find out the true cost until it was too late. Although he had had financial difficulties throughout the history of the invention despite various attempts at borrowing money, had he have known the true cost (i.e. £30), he would have paid it. It was always his intention to enter the UK national phase and to get a granted patent in the UK.

The HO found that despite his underlying intention to enter the application into the UK national phase and despite his attempts to secure finances to do this, the applicant’s final decision not to comply with the deadline set under Section 89A(3) and Rule 66)1)(b) was a conscious one based on his knowledge of the date by which he had to do this. The fact that he did not know the true cost of doing this and his statements that had he have known the true cost he would have paid the relevant fee on time was hypothetical and therefore irrelevant. He knew the date but believed he could not afford the fee, therefore no request to enter the UK national phase was filed. As such the failure to comply cannot have been unintentional. The request to reinstate the application was therefore refused.