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Reviewed 16 March 2011

Patents Act 1977: Reinstatement of patent applications

1. This notice announces a change to Office practice regarding the reinstatement of patent applications, in light of the decision of the hearing officer in Ali et al's Patent Application BL O/264/10 ("Ali").

Background

2. 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1977 provides for reinstatement of a patent application which has been refused, or treated as having been refused or withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of the Act or rules within a prescribed or specified period.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.

3. In Anning's Patent Application External Link [2007] EWHC 2770 (Pat) ("Anning"), the patent application had been treated as refused at the end of the compliance period, after the applicant had failed to respond to a substantive examination report under section 18(3). 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 general failure to put the application in order within the compliance period.

4. In light of the Anning decision, a practice notice was issued in August 2009 which stated that reinstatement of a patent application would not have the effect of extending the compliance period. Therefore, where a patent application was reinstated after being treated as refused at the end of the compliance period due to failure to respond to a substantive examination report, the applicant would be allowed a period to respond to the substantive examination report, but the compliance period would not be extended. In effect this meant that the applicant could not make effective amendments in response to the examination report, and so would be limited to responding to that report with arguments to show that the application was in order at the end of the original compliance period.

Ali et al’s Patent Application

5. In Ali the hearing officer considered Anning, the wording of section 18(3) and the 2009 practice notice, and concluded that the requirement which the applicant must be given a chance to meet following reinstatement in these circumstances is the requirement in section 18(3) to make observations or amendments which bring the application into compliance. Section 20A(7) provides a power to specify a period for that requirement to be met, and to do that properly he found it necessary to specify both a new period for responding to the examination report and a new period for overall compliance.

6. He also noted that construing the requirement in this way remains consistent with Anning, as it remains the case that the relevant failure for the purposes of considering reinstatement is the failure to respond to the examination report with observations or amendments which avoid actual or deemed refusal. The relevant failure is not the failure to get the application in order by the compliance date.

Practice in light of the Ali decision

7. Where an application is refused, or treated as having been refused or withdrawn, due to a failure by the applicant to comply with a requirement of the Act or rules, the application may be reinstated provided that the requirements of section 20A and rule 32 are met. It remains the case that reinstatement of the application will not generally have the effect of extending the compliance period.

8. However, 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, and is subsequently reinstated, both a new period for responding to the examination report and a new period for overall compliance will be specified. This will allow the applicant to respond to the examination report with amendments which bring the application into compliance, if necessary.

9. This practice notice supersedes the 2009 practice notice.

10. 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 available opportunity.

Enquiries

11. Any enquiries about this notice should be made to:

Nick Smith
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

15 March 2011