Patent decision

BL number

O/264/10

Concerning rights in

GB 0225836.6

Hearing Officer

Dr J E Porter

Decision date

26 July 2010

Person(s) or Company(s) involved

Ibrahim Ghulam Murad Ali Jamal Kashani Mehdi Farzpourmachiani Ali Farzpourmachiani

Provisions discussed

Patents Act 1977 sections 18(3), 20 and 20A

Keywords

Amendment, Reinstatement, Section 20 period

Related Decisions

[2009] UKIntelP o39909

Summary

The applicants failed to respond to an examination report and the application was eventually treated as refused on the compliance date. They subsequently successfully applied for reinstatement. Under the terms of the reinstatement, the Office set a new period for response to the outstanding examination report.

However, the Office’s view was that, because the compliance period had ended, the only way that the applicants could respond to the outstanding examination report was to supply arguments to the effect that the application had, in fact, been in order at the compliance date and so should now be granted. Amendment was, strictly speaking, possible - but any amendment would not change the fact that the application had not been in order on the compliance date.

The applicants disagreed and argued that an extension to the compliance period should follow from the reinstatement, thus allowing them to make amendments in response to the outstanding examination report.

The hearing officer considered the decision of the Patents Court in Anning’s Patent Application [2007] EWHC 2770 (Pat) and the wording of section 18(3), and concluded that the requirement which the applicant must be given a chance to meet following reinstatement was the requirement in section 18(3) to make observations or amendments which bring the application into compliance. Section 20A(7) provided a power to specify a period for that requirement to be met, and to do that properly it was necessary to specify both a new period for replying to the examination report and a new period for overall compliance.