Chitolie v Patent Office

On an appeal against the exercise of a discretion, the appellant bears the burden of showing that the decision was erroneous. That burden is particularly heavy where the appeal concerns a discretionary decision to revive a lapsed patent application. The Comptroller may impose conditions protecting third parties who relied on the public register during the period of withdrawal or lapse. Such conditions are appropriate where the application was revived after the relevant period and third parties may have acted on the apparent withdrawal.

The appellant appealed from a decision of the Assistant Director acting for the Comptroller concerning a patent application. The application was treated as withdrawn because no request for substantive examination was filed within the prescribed period, including the applicable grace period. The Comptroller agreed to allow the application to proceed subject to conditions protecting third parties, but the appellant declined those conditions. The Assistant Director upheld their imposition. The appellant did not attend the appeal hearing, and the issue was whether that decision should be overturned.

1. The appeal was dismissed. The appellant was ordered to pay the respondent’s costs in the sum of £1,000.
2. The Comptroller has a very wide discretion in a belated application to allow a withdrawn or lapsed patent application to proceed. If the application is revived, the Comptroller may impose appropriate terms.
3. The appellant bears the onus of demonstrating that the decision under appeal was erroneous. That is a particularly heavy onus where the appeal challenges the exercise of a discretion.
4. The application had been treated as withdrawn under the Act, section 18(1), and rule 33.2 of the Patent Rules after the applicant failed to request substantive examination within the prescribed period. The public had consequently been informed through the register that the application was withdrawn and would not produce a valid patent monopoly.
5. Conditions mirroring those under section 28(a) of the Act were appropriate. They protected third parties who might have commenced, or prepared to commence, acts that could infringe the patent during the period when the public register showed the application as withdrawn or lapsed. The Assistant Director’s reasoning was fair and unimpeachable.

• High Court (Patents Court): Appeal from the Assistant Director’s decision dated 25 March 2004 dismissed; costs of £1,000 ordered.
• Assistant Director acting for the Comptroller: Conditions imposed for the patent application to proceed after its withdrawal.