Patent decision

BL number

O/208/10

Concerning rights in

GB 2437619 B

Hearing Officer

Dr J E Porter

Decision date

28 June 2010

Person(s) or Company(s) involved

Furuno Electric Company Limited

Provisions discussed

Patents Act 1977 sections 14(5) and 15(9) Patents Rules 2007 rule 107

Keywords

Clarity, Divisional application, Rectification of irregularities

Related Decisions

None

Summary

The applicant replied early to an examination report and as a result the patent was granted. After grant, but within the original deadline for reply to the examination report, the applicant lodged a new application with a request that it be treated as a divisional application.

The applicant argued that the patent should not have been granted because there were outstanding deficiencies which merited a further examination report. In particular, a statement of invention remained, which corresponded to a deleted independent claim relating to a second invention. In the alternative, the applicant argued that this amounted to foreshadowing of a divisional application, which the Office ignored. Furthermore, they argued that the patent should not have been granted before the expiry of the deadline for reply set in the examination report, and so the comptroller should rescind grant under rule 107 on the basis of one or more of these procedural irregularities.

The Hearing Officer held that when an examiner considers whether an application complies with the Act he uses his judgment to determine the facts. If an applicant disagrees with the examiner’s assessment, this does not mean that a procedural irregularity has occurred, and other remedies are available. Furthermore, the retention of the statement of invention did not amount to foreshadowing of a divisional application, and it was not an error to grant the patent following what appeared to be a complete reply to the examination report. There was no procedural irregularity.