Abaco Machines (Australasia) Pty Ltd, Re Patent Application

Restoration of a UK patent priority date requires an unintentional failure to file the relevant application within the statutory period. An intention to file a PCT application is not an intention to file a UK application under the Patents Act 1977. The statutory deeming provisions for PCT applications operate only where an international application has actually been filed and accorded a filing date. They cannot be extended to a hypothetical application that was never made. The PCT is a complete code, including its applicable priority timetable. An applicant who chooses that route must accept its procedural requirements.

Abaco claimed priority from a Vietnamese patent application filed on 7 January 2004. Owing to errors by its patent agents, it failed to file the intended PCT application in Australia by 7 January 2005. It later filed a UK national application on 7 March 2005 and sought to retain the Vietnamese priority date under section 5 of the Patents Act 1977.

The Hearing Officer held that the failure to file the UK application within twelve months was intentional because Abaco had intended to file a PCT application, not a UK national application. The appeal concerned whether that intention made the failure unintentional and whether the UK application could be treated as the national-phase equivalent of the unfiled PCT application.

1. Appeal dismissed. The Hearing Officer correctly held that Abaco had not unintentionally failed to file an application for a UK patent within the period required by section 5(2C) of the Patents Act 1977.
2. The amendments to section 5 could properly be viewed against the background of Article 13(2) of the Patent Law Treaty, but that did not alter the statutory meaning of the relevant application. Under section 5(2), the “application in suit” meant an application for a patent under the Act. The definition of “patent” in section 130(1) reinforced that construction.
3. During the priority period Abaco intended to file an international PCT application in Australia. It did not intend to file an application for a UK patent at the UK Patent Office. Its failure to file the latter application was therefore intentional for the purposes of section 5(2C)(b), even though the failure to file the PCT application resulted from an administrative error.
4. The PCT formed a complete code, as recognised in Archibald Kenrick & Sons Ltd’s International Application [1994] RPC 635. Sections 89, 89A and 89B of the Act treated an international application as an application under the Act only within the statutory conditions. Those conditions included the international application having actually been accorded a filing date. The court rejected the attempt to apply those deeming provisions to a hypothetical PCT application which had never been filed.
5. The expression “application in suit” did not refer narrowly to the application number allocated by the Patent Office. The number merely identified the application. Nevertheless, the relevant application was the application in the form actually sent to the Patent Office, not the PCT application Abaco had intended to file.
6. The court left for future cases any difficult questions concerning permissible differences between the application actually filed and what the applicant intended to file during the priority period.

• Hearing Officer: On 30 October 2006, Mr GJ Rose Meyer held that the UK national application could not retain the Vietnamese priority date.
• High Court (Patents Court): The appeal was dismissed and the Hearing Officer’s conclusion and reasoning were upheld.