Patent decision

BL number

O/305/13

Concerning rights in

GB1014537.3

Hearing Officer

Mr A R Bushell

Decision date

1 August 2013

Person(s) or Company(s) involved

Mr Roy Henry Booker

Provisions discussed

PA Act 1977 Section 20(A)

Keywords

Reinstatement

Related Decisions

None

Summary

The application was filed 1 September 2010 and was published on 8 February 2012. It proceeded normally until 24 July 2012, when the Office sent the applicant a reminder that if he wished to continue with the application, the request for a substantive examination should be filed on a Form 10 with the prescribed fee, on or before 8 August 2012, unless a request to extend that time by two months was made at an additional cost.

The Form 10 was not received by the due date and was therefore terminated. The next contact the applicant had with the Office was on 28 November 2012, when he was informed that his application had lapsed due to the non-filing of the Form 10 and its fee, but that it still may be possible to reinstate the application. Following several telephone conversations and further letters from the Office the applicant requested reinstatement of the application on 16 April 2013. On receipt of the application, the Office wrote to the applicant explaining that it had been filed outside the prescribed period allowed under r 32(2)(a) of the Rules and therefore could not be considered as being made on time. The Office also explained that they felt that a case for reinstatement had not been made out because the failure to file the Form 10 on time was not “unintentional” as required by s. 20(A) of the Act. The applicant subsequently requested to be heard on both these matters.

At the hearing, the HO investigated in further detail whether the application for reinstatement had been filed within the time allowed under rule 32(2)(a) because the evidence filed prior to the hearing was inconclusive on this point. Following further submissions at the hearing and in conjunction with the evidence, the HO concluded that application for reinstatement had in fact been filed in time.

He then went on to consider whether the applicant’s failure to file his Form 10 on time was unintentional. It was clear from the evidence filed that Mr Booker had been made aware of the date his Form 10 was due. It was also clear from the evidence filed that Mr Booker was advised on several occasions by the examiner not to continue with his patent application. This understandably confused Mr Booker. Following oral submissions at the hearing the HO found that the reason why Mr Booker did not file his Form 10 on time was that he simply forgot to do so because he had concentrated all his efforts on convincing the examiner of the viability of his invention. The applicant was adamant that he intended to file his Form 10 by the deadline but the amount of research he was forced to carry out following the examiners advice led to him forgetting to do so. Based on these submissions the HO found that the applicant’s failure to file the Form 10 on file was not a conscious decision and was therefore unintentional. He went on to order reinstatement of the application.