Patent decision

BL number

O/475/12

Concerning rights in

GB1005762.8

Hearing Officer

Mr G J Rose'Meyer

Decision date

29 November 2012

Person(s) or Company(s) involved

Mr Kevin McIntyre

Provisions discussed

PA Act 1977 Section 20(A) and Rule 32

Keywords

Reinstatement

Related Decisions

None

Summary

Application GB1005762.8 was filed on 7 April 2010 in the name of Kevin McIntyre and was published on 1 December 2010. The application proceeded until 17 May 2011, when the Office sent the applicant a reminder to his registered address for service in the UK (the applicant being resident in Australia) that if he wished to continue with the application, the request for a substantive examination should be filed on a Patents Form 10 with the prescribed fee on or before 1 June 2011, unless a request to extend that time by two months was made at additional cost. The Form 10 was not filed by the due or extended date and was duly terminated with effect from 2 June 2011. On 19 December 2011 the applicant rang the Office to enquire as to the status of the application. He was advised that it was terminated but that he could file for reinstatement if he did so by 20 February 2012. On 1 March 2012 the Office received by fax a Patents Form 14 along with its prescribed fee and an accompanying letter explaining the circumstances surrounding the lapse of the application, which included the reason that he had not received any correspondence relating the application from his UK address for service.

On 7 March 2012 the Office wrote via email to Mr McIntyre saying that based on the evidence he had filed to date, the case for reinstatement of the application had not been satisfactorily made because the request to reinstate the application was not filed in the time prescribed by rule 32(2)(a) - i.e. within two months from the date on which the cause of non compliance had been removed. Further evidence was subsequently filed, including evidence of the applicant’s medical conditions. However, the official objections were maintained and a telephone hearing with the applicant’s representative in Australia was held. At the hearing the HO heard further submissions on the applicant’s medical condition and how it affected his ability to remember and retain information. The HO allowed further time for evidence clarifying details surrounding a second phone call the applicant is said to have made to the Office. That further evidence when filed showed that Mr McIntyre had phoned the Office again on 5 January 2012 and had understood from that phone call that he had a two months from the date of that call in which to file his reinstatement application.

The HO held that as a result of the applicant not receiving his official correspondence, the application had lapsed and that therefore the cause of the non compliance was essentially that he did not know what he had to do to proceed with his application or by when he had to do it. Rule 32(2) (a) requires that the reinstatement is filed within two months of the removal of the cause of the non compliance. As such Mr McIntyre had originally been told he had until 20 February 2012 in which to file his reinstatement based on his first phone call to the Office on 19 December 2011 - that date having been taken to be the date on which the cause of his non compliance had been removed. The HO held that the applicant’s medical condition had contributed to his forgetting that date to the effect that the removal of the cause of his non compliance had not actually occurred until 5 January 2012 when he rang the office for a second time. As such, the filing of the reinstatement on 1 March 2012 had been made within the time prescribed by r.32(2)(a). The HO went on to decide that the failure to comply had been unintentional under the terms of Section 20(A) and as such, he ordered that the application be reinstated.