Patent decision

BL number

O/0359/23

Concerning rights in

GB2004670.2

Hearing Officer

Dr L Cullen

Decision date

13 April 2023

Person(s) or Company(s) involved

Metabiotech Corporation

Provisions discussed

Patents Act 1977: Sections 20, 117B; Patents Rules 2007: Rule 30, Rule 108

Keywords

Extensions of time, Section 20 period

Related Decisions

None

Summary

This decision concerns two requests to exercise the discretion of the Comptroller to extend the compliance period for patent application GB2004670.2. This application was initiated under the Patent Cooperation Treaty (PCT) and published as GB2581599A in the UK national phase.

The Hearing Officer (HO), taking account of office decisions BL O/144/12 (Optinose-™s application) and BL O/610/22 (Xu-™s application), confirmed the established principle (as set down inJankowski-™s Application [1981] RPC 197)that the exercise of discretion under rule 108(3) relates to the peculiar or specific circumstances of the case. It is not sufficient to refer to circumstances that are common for patent applications such as the geographical location and distance between the applicant and the agent and/or the complexity of the subject matter of the patent application.

The HO noted that the examiner had made a change to the inventive step objection in light of the last set of amendments filed by the applicant on the day before the compliance period expired, changing one of the citations used to support this objection. The HO considered this was a circumstance peculiar to this application. The applicant had not had an opportunity to respond to this updated inventive step objection before expiry of the compliance period. In light of this, the HO considered that it was appropriate for the Comptroller to exercise discretion to extend the compliance period to allow the applicants response to be considered.

Full decisionO/0359/23  318Kb