Subsea Intervention Ltd v The Comptroller General of Patents

Under section 28 of the Patents Act 1977, the Comptroller’s power to revoke a conditional restoration order remains available until exercised. Once revocation occurs, the powers under section 28(3) and (4) are spent and the Comptroller is functus officio.

The statutory time-extension scheme is exhaustive. A mandatory extension requires a written request made within the prescribed period. A further extension is available only where that mandatory extension has first been obtained. The Comptroller has no general power to extend time or reset conditions after a properly made restoration order has been revoked.

The appellant appealed under section 97 of the Patents Act 1977 against the Comptroller’s refusal to restore its patent under section 28. The Comptroller had allowed restoration subject to payment of outstanding renewal fees by 9 December 2014, with a possible further extension. Correspondence was sent to the registered address for service, but the appellant did not become aware of it until after the conditional restoration order had been revoked.

The appellant argued that the Comptroller should have reconsidered or rescinded the revocation and should have exercised a discretion differently in light of the circumstances. The central issues were whether the Comptroller retained power to revisit the decision and whether the appeal court could intervene notwithstanding that the original decision was proper on the material before the hearing officer.

1. Appeal dismissed. The Comptroller’s decision to revoke the restoration order was upheld.
2. Section 28(3) imposed a mandatory duty to restore the patent once the statutory conditions were satisfied. Section 28(4) permitted the restoration order to be made subject to conditions and conferred a discretionary power to revoke the order if those conditions were not met.
3. The power to revoke remained capable of being exercised from time to time before it was used. The Comptroller demonstrated that continuing power by allowing the matter to remain open and inviting an application for a further extension after the original payment period expired. Once the revocation power was exercised, however, the statutory powers under section 28(3) and (4) were spent. The Comptroller was then functus officio and could not rescind the revocation or retake the restoration decision.
4. Section 117B of the Patents Act 1977 provided the relevant route for extending the payment period. Under section 117B(2) and rule 109 of the Patents Rules 2007, a written request had to be made within the prescribed period. The power to grant a further extension under section 117B(4)(b) arose only after the period had first been extended under section 117B(2). No general power to extend time existed.
5. The failure to pay the fees or request an extension meant that the conditions of the restoration order had not been met. The hearing officer could not properly have restored the patent on the material before her. It was unnecessary to determine whether the appeal was confined to a review, whether a rehearing was available, or whether the court could take account of facts not before the hearing officer.
6. The decision illustrated the importance of keeping the registered address for service up to date. The possible effects on third parties and any floodgates concern were left out of account.

• High Court (Chancery Division): Appeal under section 97 of the Patents Act 1977 dismissed. The Comptroller’s refusal to restore the patent was upheld.
• Comptroller General of Patents: Restoration application allowed subject to payment of renewal fees, then refused after the conditions were not satisfied within the applicable periods.