IN THE MATTER OF THE PATENTS ACT 1977

On an appeal from the Comptroller’s exercise of a discretion, the court will interfere only where the tribunal below considered irrelevant matters, omitted relevant matters, or was plainly wrong. Where the Patent Office has made an error, default or omission within rule 100 of the Patents Rules 1995, the discretion to rectify the resulting procedural position should ask whether the applicant would have taken the necessary step if the Office had acted properly. Once that causal counterfactual is established, the applicant’s own carelessness will rarely justify refusing relief. The Office’s reminder procedure forms part of a safety-net which should not be withheld merely because the applicant failed to protect itself by a more reliable system.

Howmet Research Corporation appealed against the decision of the Comptroller’s delegate dated 23 September 2005. The delegate accepted that there was jurisdiction under rule 100 of the Patents Rules 1995 to rescind the grant of patent GB 2377401, thereby reopening the period for filing divisional applications, but declined to exercise the discretion.

The alleged Office error was the failure to send an EL26 reminder after the parent application had been amended following an objection to plurality of invention. The delegate found that, had the reminder been sent, the applicant would probably have acted in time. The central issues were the proper approach to the appellate review of that discretion and whether the applicant’s own delay justified refusing rectification.

1. The appeal was allowed. The question was not whether the judge would have exercised the discretion afresh. Whether the appeal was treated as a review or rehearing, interference was justified only if the tribunal had taken account of irrelevant matters, failed to take account of relevant matters, or was plainly wrong.
2. The relevant statutory period for filing a divisional application under sections 15(4) and 15(9) of the Patents Act 1977 ended when the patent was granted. Section 18(4) provided for grant on payment of any prescribed fee. As no such fee had been prescribed, the patent was granted by virtue of section 18(4) on the date of the Office’s letter stating that the application complied with the Act and Rules and that a patent was granted. The later statutory treatment of a patent as granted on publication under section 25 did not alter the position for the earlier sections of the Act.
3. The Comptroller’s practice of rescinding a final report or grant before advertisement could fall within rule 100 as rectification of a procedural irregularity attributable wholly or partly to the Patent Office.
4. Once a relevant Office error, default or omission was accepted, the proper discretionary question was whether the applicant would have taken the closed step had the Office done what it should have done. The delegate had found on the balance of probabilities that an EL26 reminder would have prompted timely action.
5. The applicant’s risky strategy and failures were genuine criticisms, but they did not answer the application. The EL26 procedure was a publicly assumed Office obligation and formed part of the safety-net provided for applicants. The applicant’s carelessness did not justify denying that safety-net where the Office’s error had caused the missed opportunity.

The appeal was allowed. Counsel were to address the appropriate procedural steps for rectifying the position.

• High Court (Patents Court): appeal allowed from the Comptroller’s delegate’s decision dated 23 September 2005.