Tulane Education Fund v The Comptroller General of Patents

Rule 107(3) of the Patents Rules 2007 permits extension of a specified period only where an irregularity of procedure is attributable, wholly or partly, to an error, default or omission by the Comptroller, examiner or Patent Office, and that error has actively contributed to the failure. A computer-generated result may constitute an Office error, but an applicant’s use of an inappropriate payment system is not necessarily an Office error. Section 28 of the Patents Act 1977 does not apply to supplementary protection certificates where it is omitted from Schedule 4A’s list of applicable provisions. A single payment calculated by reference to the certificate’s duration may constitute an annual fee under the governing EU Regulation. A certificate granted but not yet effective may be treated as having lapsed for this purpose.

Tulane Education Fund appealed from the Comptroller’s decision of 20 July 2011 concerning supplementary protection certificate SPC/GB99/033. The prescribed fee was not paid within the relevant period because the licensee’s agent used the electronic patent-renewal system, which converted the SPC number into an invalid patent number. Tulane sought correction of the procedural irregularity, restoration under section 28 of the Patents Act 1977, and a declaration that paragraph 5 of Schedule 4A was ultra vires.

The central issues were whether the Office’s computer-generated rejection materially caused the failure to pay, whether section 28 applied to SPCs, and whether the statutory requirement for payment before an SPC takes effect was authorised by the applicable EU Regulation.

1. Rule 107. The appeal on correction of irregularities was dismissed. Applying M’s Application [1985] RPC 249, the relevant Office error must be an error of procedure, must contribute to the failure, and must do more than constitute a mere causa sine qua non. It must actively bring about the irregularity.
2. The conversion of the SPC reference into a patent number was not an error. The system was being used for an inappropriate purpose and attempted to interpret an erroneous entry in the format for which it was designed. The later rejection notice did involve an Office error because it failed accurately to identify the rejected payment. However, that error was not sufficiently causative. The payment omitted the additional fee, was not accompanied by the required form SP2, and retained client and payment references which could have identified it.
3. Section 28 restoration. Section 28 did not apply to SPCs. Section 128B and Schedule 4A set out which provisions of the Act applied to SPCs, and section 28 was not included. The reasoning proposed in Abbott Laboratories’ SPC Application [2004] RPC 20 did not require restoration to be available. Article 18 of the applicable Regulation did not require a national restoration procedure for SPCs.
4. The later Regulation repealing and replacing Regulation (EEC) No 1768/92 was to be treated as replacing it for all relevant purposes. Section 128B was therefore construed as referring to the later Regulation.
5. Ultra vires challenge. Paragraph 5 of Schedule 4A was within the permitted legislative scheme. Requiring annual fees to be paid in a single sum before the SPC took effect was compatible with Article 12. There was no material distinction between an SPC granted but not taking effect and an SPC lapsing. Article 13(1) did not prevent the certificate taking effect being conditional upon compliance with permitted administrative requirements, including payment of fees.
6. The appeal was dismissed on all grounds.

• High Court (Patents Court): appeal from the Comptroller General’s decision dated 20 July 2011 dismissed on all grounds.