Anning, Re Decision of Comptroller-General of Patents

For reinstatement under Patents Act 1977, the relevant failure is the failure whose direct consequence was refusal or deemed refusal of the application. A later warning letter does not create a new statutory requirement or extend the period for complying with the original requirement. An applicant’s failure to answer an examination report is intentional where the applicant deliberately chose not to respond, even because of a mistaken belief that the application could be placed on hold. The statutory test concerns whether the failure itself was unintentional, rather than whether the applicant intended the ultimate refusal.

The applicant appealed against the decision of the Comptroller-General’s hearing officer, decision no. BL O/374/06, refusing to reinstate patent application GB 2369347. The application had not been placed in order for grant because the applicant failed to respond to a substantive examination report within the specified period and later failed to meet the overall statutory period. The central issues were which failure directly caused the refusal for the purposes of section 20A of the Patents Act 1977, and whether the failure was unintentional.

1. The appeal was dismissed. The hearing officer had correctly identified the relevant statutory issues: the failure whose direct consequence was refusal or deemed refusal, whether that failure was unintentional, and the applicable period under rule 36A.

2. The direct failure was the applicant’s failure to reply to the substantive examination report under section 18(3) of the Patents Act 1977. The later letter warning that the application would be treated as refused did not itself require an act under section 20A. It gave the applicant a further opportunity to explain the lateness of the reply, but did not extend the time for answering the examination report.

3. The period under section 20(1) was the period during which the statutory and regulatory requirements had to be complied with. It imposed no additional requirement for the purposes of section 20A. The application failed because no reply was filed within the period specified in the examination report and nothing was subsequently done to remedy that failure.

4. The failure was intentional. The applicant had been clearly warned of the deadline and deliberately chose not to respond because he believed that the application could be put on hold. That mistaken belief did not make the failure unintentional. The statutory provision was directed to the intention accompanying the failure to comply, not to an intention that the application should ultimately be refused.

5. The hearing officer’s findings on the relevant period were sufficient to dispose of that issue in the applicant’s favour, but the intentionality requirement was not satisfied.

• High Court (Patents Court): appeal from the Comptroller-General’s decision no. BL O/374/06, dated 27 December 2006; appeal dismissed.