Betson Medical (Ireland) Ltd v Comptroller General of Patents

Restoration of a lapsed patent for non-payment of renewal fees requires proof that the proprietor took reasonable care to secure payment by the statutory deadline. Awareness of the deadline, an intention to pay, and general efforts to raise funds are insufficient. The proprietor must address the particular fee and show that the failure to pay was not attributable to a lack of reasonable care. Where impecuniosity is relied upon, the evidence must explain the relevant financial circumstances and the steps taken to obtain the limited sum required.

Betson Medical appealed against a decision of the Comptroller’s Hearing Officer dated 12 November 2009. The Hearing Officer refused an application under section 28 of the Patents Act 1977 to restore a European patent which had lapsed after the eighth-year renewal fee was not paid.

The fee and the applicable period of grace expired on 6 June 2004. Betson Medical relied on severe financial difficulties, efforts to secure investment, and an intention to pay. The central issue was whether the proprietor, or its agent acting on its behalf, had taken reasonable care to ensure payment of the particular renewal fee and prescribed additional fee within the statutory period.

1. Appeal dismissed. The Hearing Officer applied the correct legal question under section 28(3) of the Patents Act 1977.

2. The relevant inquiry was whether the proprietor took reasonable care to see that the renewal fee and prescribed additional fee for the patent in suit were paid by 6 June 2004. It was not enough to ask whether Mr Betson had made reasonable efforts to raise money for the whole patent portfolio or for commercial exploitation of the invention.

3. The court applied the approach in Continental Manufacturing & Sales Incs. Patent [1994] RPC 535 and Ament’s Application [1994] RPC 647. The standard is fact-sensitive. Inability to pay does not itself establish reasonable care. The proprietor must show that the inability to pay did not result from a failure to take reasonable care, which may require evidence of attempts to obtain financial assistance and, where appropriate, steps to avoid impecuniosity.

4. The reasoning was consistent with Bending Light Limited’s Application [2009] EWHC 59 (Pat): where the alleged impecuniosity is complicated, the burden lies on the applicant to elucidate the relevant facts. Here, the evidence did not show that the eventual investor or personal supporters had been asked to provide the limited sum of €359.37 required to renew the patent. It also left material gaps concerning the period up to 6 June 2004 and contained inconsistencies concerning the company’s financial position.

5. The evidence therefore failed to establish reasonable care in relation to the particular renewal payment. The application for restoration was properly refused.

• High Court (Patents Court): On 31 March 2010, the appeal from the Comptroller’s Hearing Officer was dismissed.
• Intellectual Property Office: The Hearing Officer, acting for the Comptroller, refused the restoration application on 12 November 2009.