Patent decision

BL number

O/485/14

Concerning rights in

EP2134165

Hearing Officer

Mr G J Rose'Meyer

Decision date

13 November 2014

Person(s) or Company(s) involved

AspenBio Pharma, Inc

Provisions discussed

Section 28(3)

Keywords

Restoration

Related Decisions

None

Summary

The issue concerns whether the patent in suit should be restored under section 28 of the Act for the failure to pay a renewal fee. The renewal fee in respect of the 5th year of the patent was not paid by the due date, nor during the subsequent 6 months allowed for late payment. The patent therefore ceased and an application for restoration of the patent was filed.

The intention of the proprietors was to validate the European patent in all countries which were deemed to be of commercial interest. The original list of countries included the UK. Prior to the due date for validation in relevant countries, in late 2011, an internal determination was made by the proprietors to establish which European countries should proceed to validation. This determination was based on various criteria and to help them do this the applicants employed a consultant in the field covered by the patent. In late 2011 he advised them not to validate or renew the patent in the UK.

In early 2013, a licensee selected by the applicants told them that the patent was in fact of value in the UK and that they had been wrongly advised by the consultant in 2011. The applicants filed the restoration arguing that they had made their decision not to renew the patent in February 2012 based on incorrect advice. Had they have been in receipt of the correct advice, they would have renewed the patent and as such the failure to pay the renewal fee had been unintentional.

The HO decided that the applicants had taken steps to determine what to do with this patent and had entrusted the consultant to advise them. They never questioned his advice at the time and based on this, albeit what transpired to be incorrect advice, they made a conscious decision not to renew the patent. The advice they later received outside the period in which the patent could have been renewed had no relevance. As such the HO found that the failure to pay the renewal fee cannot be said to have been unintentional and he refused the application for restoration.