Matsushita Electric Industrial Co v Comptroller General of Patents

Restoration of a lapsed patent requires the Comptroller to be satisfied that the failure to pay the renewal fee was unintentional. A bare assertion of unintentionality is not, as a matter of principle, sufficient evidence. The applicant bears the evidential burden and must provide material enabling the Comptroller to make an objective judgment on the facts. The amount and nature of evidence depend on the inquiry and the purpose of the decision. The amended test is less onerous than the former reasonable-care test, but it does not reduce restoration to a clerical formality. The Comptroller may seek further information to assist the applicant, while retaining the decision whether the statutory test is satisfied.

The claimant appealed from three materially identical decisions of a UKIPO hearing officer refusing restoration of patents that had lapsed when renewal fees were not paid. The applications relied principally on statements that the failures had been unintentional and that the proprietor had always intended to keep the patents in force.

The hearing officer concluded that the evidence did not enable the Comptroller to be satisfied under Patents Act 1977, s.28(3). The central issue on appeal was whether a proprietor’s bare assertion of unintentionality was sufficient, or whether the Comptroller could require further evidence concerning the circumstances of the non-payment.

1. Appeal dismissed. The hearing officer had correctly refused restoration of the three patents. The evidence filed consisted essentially of assertions that the lapses were unintentional.
2. Under Patents Act 1977, s.28(3), the Comptroller must be satisfied that the failure to pay the renewal fee was unintentional before restoration can be ordered. The provision requires a judgment by the Comptroller. It does not merely require the applicant to provide a prescribed statement.
3. A judgment must ordinarily be based on evidence. There is no universal level of evidence sufficient whenever a decision-maker must be satisfied of a fact. The appropriate evidence depends on the nature of the inquiry and the purpose and consequences of the decision.
4. Restoration has proprietary consequences and may affect third parties. It is therefore not a casual administrative step. A bare assertion cannot, as a matter of principle, ordinarily enable the Comptroller to determine that the statutory requirement is met. The applicant must provide facts or surrounding circumstances sufficient to allow an objective and reasoned determination.
5. The amended test is different and generally less onerous than the former reasonable-care test. That does not mean that the Comptroller must accept the same form of assertion in every case, or that evidence concerning the circumstances of the failure is irrelevant. Nor does the Comptroller’s request for further information amount to cross-examination; it may be an interactive procedure intended to assist the applicant in discharging the burden.
6. Practice concerning registered designs, United States patent practice and the Patents Treaty could not alter the construction of the United Kingdom statute. The court also declined to remit the applications. It doubted its jurisdiction to revive dismissed applications and, in any event, would not exercise such a discretion because the applicants had deliberately maintained their unsuccessful position that no further evidence was required.

• High Court (Patents Court): dismissed the appeal from the UKIPO hearing officer’s decisions and declined to remit the applications for rehearing.