Patents Act 1977: Reinstatement of patent applications

1. This notice outlines the alignment of Office practice on the reinstatement of patent applications with the judgment of Pumfrey J in Anning's Patent Application External Link [2007] EWHC 2770 (Pat).

Background

2. In accordance with section 20(1) of the Patents Act 1977, if it is not determined that a patent application complies before the end of the prescribed period with all the requirements of the Act and rules, the application shall be treated as having been refused by the comptroller at the end of that period. The period for the purposes of section 20(1) is the compliance period, prescribed by rule 30.

3. Section 20A of the Patents Act 1977 provides for reinstatement of a patent application which has been refused, or treated as having been refused or withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of the Act or rules within a prescribed or specified period. If an application is reinstated under section 20A, subsections (7) and (8) allow the applicant a period of not less than two months to comply with said requirement.

Anning's Patent Application

4. In Anning’s Patent Application [2007] EWHC 2770 (Pat) the applicant had failed to reply to a substantive examination report within the period specified in the report, and had taken no action in response to a subsequent letter informing him that his application would be treated as refused if he did not reply by the end of the compliance period. The application was subsequently treated as refused under section 20(1) at the end of the compliance period.

5. Pumfrey J held that the “failure to comply” that led to the application being treated as refused was the failure to respond to the examination report, not the failure to put the application in order within the compliance period. He stated:

“The fact that [the applicant] had the possibility of explaining his non-compliance does not… extend the time within which that compliance should have taken place: it merely gives him a further opportunity to extract himself from the consequences of non-compliance, which will necessarily be fatal at the end of the period for putting the application in order. The letter [informing the applicant that no reply to the examination report has been received and warning that the application will be treated as refused at the end of the compliance period] does not itself either require any act to be done or extend the period of time for doing that act, and is for this reason not within s.20A: and in my judgment the prescribed period under s.20(1) is merely the period during which the requirements of the Act and Rules must be complied with. It imposes no additional requirement on the applicant.”

Practice in light of the Anning decision

6. Where an application has been treated as refused at the end of the compliance period due to failure to respond to a substantive examination report, the application may be reinstated provided that the requirements of section 20A and rule 32 are met. Where reinstatement is allowed, the applicant shall be allowed a period of not less than two months to respond to the substantive examination report, since it is the failure to respond to the examination report which led to the application being treated as refused. However, this will not have the effect of extending the compliance period. Therefore, where an application is reinstated after the compliance period has ended, and the opportunity under rule 108 for extending that period has expired, amendment of the reinstated application will not be possible. The applicant will instead have the opportunity of providing arguments, within the two month period, to show that the application was in order at the end of the compliance period.

7. It follows that in any circumstances where an application is refused, or treated as having been refused or withdrawn, due to failure by the applicant to comply with a requirement of the Act or rules, reinstatement of the application will not have the effect of extending the compliance period.

8. This notice highlights the importance of putting the application in order before the end of the compliance period. The compliance period may be extended in two-month tranches under rule 108(2) or 108(3), by filing Form 52, the appropriate fee and evidence supporting the request for an extension, if rule 108(3) applies. Any request for such an extension must be filed within two months of expiry of the period.

9. Section 20A of the Manual of Patent Practice and Chapter 10 of the Formalities Manual will be amended to reflect this change of practice at the next update.

Enquiries

10. Any enquiries about this notice should be made to Patents Legal Section:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel:  +44 (0) 1633 814839
Fax: +44 (0) 1633 814491

Sean Dennehey
Director of Patents
Intellectual Property Office
14 August 2009